Counseling

As organizations evolve and discover new ways to leverage intellectual property (IP), they expect their lawyers to be informed about the best practices in IP strategy. Miles & Stockbridge strives to exceed expectations, combining our experience with and knowledge of IP management practices with an understanding of how factors, such as growth-phase, industry and organizational culture affect a client’s strategic choices. Leveraging our industry and business experience with our legal expertise shortens the learning curve with respect to a client’s legal, business and technical issues, enabling us to respond efficiently to unexpected IP issues and create effective proactive strategies.

IP plays an increasingly central role in organizations as a tool to inform and further strategic goals and as currency in corporate transactions. The concomitant need for intellectual asset managers to cross technical, marketing, financial and operational boundaries is mirrored in the "no boundaries" culture at Miles & Stockbridge. Lawyers performing prosecution, litigation, corporate and transactional work are teamed, leveraging our knowledge to educate each other and our clients, as well as provide a true multi-disciplinary perspective.

Our broad perspective reveals itself clearly in our approach to patent portfolio counseling. We have helped clients develop efficient internal processes encompassing every stage of innovation, from incentivizing and educating grass root innovators in the legal and business control points that drive IP value to extracting latent value in mature patent portfolios. Our efforts at melding the legal perspective with the market differentiators that drive IP value inform the decision-making process of smaller businesses, to help them achieve the best return on their IP investment

Our clients call on us to assist them in making informed decisions before investing in technology – whether the decision involves backing the product of an individual inventor, providing venture capital funding for a new company, maximizing the return on a licensing transaction or performing due diligence in corporate transactions. Our clients rely on our business-oriented pragmatic and creative competencies when making important strategic moves.

 

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When a venture capitalist was asked to fund a company to support defense of a patent infringement appeal, we were asked to evaluate the lower court's decision and the likelihood that the decision would be upheld. Based upon our advice, the investor funded the company, resulting in a sizeable profit.

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Miles & Stockbridge has an ongoing relationship with the Japanese government, assisting the Japanese legislature (MITI) and the Japanese patent office in understanding U.S. intellectual property laws, thereby enabling the government to coordinate its international policy.

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When a Mexican government agency, assisted by the Business Software Alliance (BSA) demanded that a significant client of the firm submit to a software infringement audit, we assessed the client's position and promptly devised an action plan restricting the audit to prevent it from being a "fishing expedition." We subsequently created a plan to assist the client in its day-to-day use of its licensed software to minimize the risk of future audits.

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A start-up company sought guidance on establishing an online business referral network. The client's needed to protect its primary asset - its website and website content - from duplication by potential competitors. We registered the copyright with the US Copyright Office, publically establishing the client's ownership claims in the event competitors attempt to trade on the client's efforts or duplicate its intellectual property.

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A manufacturer of consumer goods designed a new line of products, engaging Miles & Stockbridge to establish that the products do not infringe a third party's patents. When the search uncovered several patents related to the proposed line of products, we advised the company how to design around the relevant patents and still compete effectively. The manufacturer redesigned its products before bringing them to market thereby avoiding potentially costly patent disputes.

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The reference to results obtained in previous matters does not imply that the same or similar results can be obtained for other clients in similar matters. Results will depend on the specific factual and legal circumstances of each client's case.


 

"Pennsylvania Considering “Leegin-Repealer” Legislation to Restore Per Se Treatment of Resale Price Maintenance ," Miles & Stockbridge News Brief (John E. McCann, Jr., Ranak K. Jasani, Robert M. Cattaneo) (April 2013).

"CPSC To Continue Its Aggressive Approach In 2013," Law360 (Lee L. Bishop and Timothy L. Mullin, Jr.) (December 2012).

"A Primer On Alternative Fee Arrangements," Law360 (Matthew Wagman and Christopher Madaio) (September 2012).

"How To Deal With The Impending "First-To-File" Patent Law," Article (Eric King) (August 2012).

Miles & Stockbridge

When you work with Miles & Stockbridge, you get deep relationships, forward-thinking solutions, and not just a lawyer, a team.