International IP

Rapid technological development and an increasingly global marketplace mean that companies of all sizes must assert greater control of their intellectual property portfolios, at home and abroad. From our offices in London, Brussels, Washington, D.C., New York, Chicago, Los Angeles, and other commercial and research centers, the international intellectual property team at McGuireWoods helps clients identify, exploit and protect creative assets in every form. We advise clients on the full range of domestic and international IP matters involving patents, copyrights, trademarks, trade secrets and other creative assets.

McGuireWoods has extensive experience managing clients’ foreign trademark portfolios. We monitor the prosecution or maintenance of more than 3,400 pending or registered foreign trademark applications and registrations. In addition to our U.S.-based trademark lawyers, we have experienced practitioners in our London and Brussels offices who assist clients with filings in the United Kingdom, France, Benelux, and Kazakhstan, and with Community Trade Mark applications at the Office for Harmonisation in the Internal Market (OHIM) in the European Union.

We have strong personal relationships with trademark agents in virtually every country that issues registrations. These relationships allow us to obtain excellent service for our clients from knowledgeable practitioners with strong communication skills. We have assisted clients with successful trademark applications in countries from Australia and China to Syria and Iran. In addition, we often work as a liaison with existing foreign trademark counsel to ensure that clients are abreast of all developments with respect to their filings, and to allow for a systematic approach to the worldwide protection of their marks. We regularly advise clients in the design and implementation of effective trademark watching plans. We have a longstanding relationship with Trade Marks Directory Service of London and Thomson Compumark, each of which offers comprehensive watching service plans that can be tailored to accommodate the scope of a client's portfolio.

Our international patent team prepares, files and prosecutes patent applications in the U.S. Patent and Trademark Office and in foreign patent offices based upon inventions developed by our clients domestically and abroad. We negotiate a wide range of patent licensing agreements on behalf of individual inventors as well as universities, government agencies, and small to multinational corporations. For example, we represent one of the leading global polymer system suppliers in range of patent matters, and have advised a UK-owned aerospace business with complex non-competition and intellectual cross-licensing issues.

Our patent group has significant experience in performing due diligence projects for our clients who seek to purchase intellectual property portfolios or who intend to merge with, invest in, and/or purchase companies with significant intellectual property portfolios. Our experience includes all aspects of corporate and technical due diligence in a vast array of technologies. In addition, our patent lawyers routinely conduct freedom to operate analyses for clients prior to commercializing new products and for clients who seek to move into new product areas.

More and more of our clients seek our advice in not only procuring patents, but in helping them commercialize their technology through licensing arrangements. In preparing such agreements, we work closely with our clients to develop strategies to firmly establish foreign patent and other critical intellectual property rights up front. We also advise on related legal issues, such as antitrust, regulatory and advertising compliance matters.

When cross-border disputes arise, we use state-of-the-art computerized docketing systems and the latest technology to maintain close communications with clients across geographical boundaries. In addition to advising clients in litigation in numerous jurisdictions, we represent companies in patent, trademark and copyright infringement matters before the International Trade Commission (ITC) and in arbitration under the rules of the International Chamber of Commerce (ICC), the London Court of International Arbitration (LCIA) and the American Arbitration Association (AAA).

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