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Intellectual Property

Intellectual Property

According to Chambers USA 2018, Bracewell’s Intellectual Property team attracts an "impressive international client base, as well as acting for leading domestic energy, retail and automotive companies," providing a comprehensive approach to intellectual property counselling, including patent prosecution and enforcement, copyrights, trademarks, outsourcing, licensing, technology transfers and joint venture agreements. Bracewell’s IP team includes patent attorneys with technical degrees in chemical, electrical, mechanical, industrial, and architectural engineering, as well as computer science, physics, chemistry, applied math, biology, and industrial biotechnology. Our team also includes lawyers with advanced degrees in electrical engineering, chemistry, pharmacology, and business. Prior to joining the firm, many of our lawyers built highly successful careers at research institutions, regulatory agencies, and major public and private companies.

This combination of technical, business and legal experience gives our lawyers an in-depth, first-hand understanding of our clients’ needs. We also advise clients with regard to the registration and protection of other intellectual property rights through trademarks, service marks, trade names, trade dress, copyrights, trade secrets, and other proprietary information. We work closely with attorneys throughout the firm to provide intellectual property solutions in connection with company formation, mergers and acquisitions, dispute resolution and litigation, audits, due diligence, and other business concerns.

Access our Intellectual Property Insights

Cyber preparedness is necessary to mitigate the risk arising from a cyberattack. With the proliferation of e-commerce, electronic record keeping, and improved data collection techniques, the incidence of cyber intrusions have increased such that it is not a question of whether a data breach for any given system will occur, but when. Twenty-first century data breaches involve sophisticated attacks on the network and information systems which underpin modern commercial and corporate activities for companies of all sizes. This malicious activity affects all types of entities including retail companies, financial institutions, investment advisors, energy companies, governmental agencies and other commercial or business ventures. 

At Bracewell, we work with our clients to develop and implement individualized privacy solutions that enable our clients to stay compliant with regulations throughout the US and globally. We counsel clients from the development of their compliance program through a security breach. We work with all departments, including compliance, human resources, security, information technology, and legal to ensure that privacy solutions meet our client's overall organizational needs. Our team's cross-practice approach means that we are thinking about privacy across different industries and in different contexts. 

Our team of intellectual property lawyers leverages its technical and industry knowledge to file, prepare, prosecute and enforce patents and protect the core interests of our U.S. and international clients’ businesses. Our established practitioners navigate the United States Patent and Trademark Office (USPTO) process as advocates and regularly collaborate with intellectual property and general practice firms across the world for managing and enforcing our clients’ intellectual assets abroad. Our team includes numerous former USPTO examiners, who bring a detailed understanding of the prosecution process and its challenges. We have experience with all post-issuance proceedings: inter partes review, post-grant review, and covered business methods We also handle appeals before the Patent Trial and Appeal Board (PTAB). 

Bracewell’s technology transactions practice is known for leveraging deep industry experience to advise in connection with technology-related legal issues. Our practice group is dedicated to commercial transactions driven by technology. Our goal is to create effective business advantages for our client and protect intellectual property from infringement, while maximizing the return on the intellectual property investment. We represent cutting-edge technology clients, as well as technology investors. We structure, draft and negotiate complex and sophisticated joint ventures, strategic alliances, asset sales and spinouts, manufacturing and supply agreements, OEM, distribution and reseller agreements, joint marketing and collaboration research agreements.  Our technology specific experience includes substantial work with clients in the following industries:  biotechnology, clean technology, communications, e-commerce, life science and health care, medical devices, renewables and alternative energy, semiconductors, social media and games, and software. We also protect clients’ intellectual property rights in development agreements, research agreements, confidentiality agreements, trade secret and know-how agreements, and employment and consulting agreements.  Technology transactions can access a vast range of disciplines, and Bracewell has the resources to handle every aspect of a complete transaction in a well-coordinated manner.

Bracewell’s trademark lawyers use personal insights drawn from experience working in-house to counsel clients on every aspect of U.S. and international brand protection. Chambers USA 2016 applauds our “strong clearance, prosecution and enforcement capabilities,” and clients tell Chambers USA we are particularly known for counseling on “branding and advertising issues related to product launches,” and for assisting those in the technology, media, retail, telecommunications, finance, and energy industries. We have marked experience in high-volume searching and clearance, as well as high-volume prosecution. Our lawyers also help clients develop trademark enforcement programs, which focus on the identification and elimination of trademark infringement with a minimum of expense. Our practical experience includes reviewing proposed new brands and advertising campaigns to ensure maximum protection against trademark infringement and  false advertising claims; advising clients on cutting-edge Internet issues relating to trademarks, unfair competition, false advertising and copyright infringement on the Internet; and assisting clients with designing programs to prevent counterfeiting. Our lawyers have significant experience in litigating trademark matters before the Trademark Trial and Appeal Board and federal courts across the U.S. In addition, we regularly assist clients with international infringement matters in administrative bodies and courts around the world.


Recent Notable Matters

American upscale fashion retailer   — strategic counseling on trademark and copyright enforcement issues facing the company

American-made shoe manufacturer and retailer  — worldwide trademark prosecution and enforcement, as well as trademark litigation in the US

DryLet, LLC — formation and capital raising activities, as well as developing its intellectual property strategy with regard to its patented, dry-to-the-touch nanobioreactor products

Global asset management firm — drafting of an information security policy and an incident response plan

Global energy company — drafting technology agreements to dictate terms and parameters of partnerships with target technology companies related to the development and co-ownership of intellectual property

International electronics company — more than 600 patent prosecution matters related to micro-electronics hardware and software-related business methods

International energy company — more than 2,000 patent prosecution matters related to upstream and downstream oil technologies

International mobile device company — act as in-house trademark counsel handling all trademark matters from search, clearance, prosecution and counseling to enforcement and litigation in North and South America; provided counsel in support of the launch of the company’s first multi-million dollar global advertising campaign

International video game company  — act as extension of in-house teams handling special projects on trademark, branding, copyright, and first amendment issues in the video game and media arenas

Mobile device company — providing counsel on Internet domain name issues, including the continued expansion of the new gTLDs

Oil and gas exploration and production company — assisting with cyber preparedness matters

Privately owned real estate firm — drafting of an information security policy and management of the fallout of the loss of personally identifiable information (PII)

Real estate investment firm — client was victimized by a cyberattack

Retailer — management of government relations and strategic communications after the detection of an external data breach