Thomas | Horstemeyer

offers expert services in every aspect of intellectual property law.

From biology to biotechnology, cable connectors to computer software, circuits to switches; we recognize and appreciate the novelty and functionality of our clients’ inventions—ideas and technologies that are changing the world—and have the acumen to represent them with authority.

    We perform the following services:

  • Due Diligence
  • Legal Opinions
  • Licensing
  • Litigation
  • Portfolio Management
  • Post Grant Procedures
  • Prosecution

Due diligence relates to assessing and managing risks in a transaction that involves IP. Due diligence investigations may be required prior to the undertaking of various actions, including product releases, mergers and acquisitions, public or private offerings, joint ventures, collaborations, litigation, IP agreements, and the like. A typical due diligence investigation may involve one or more of preparing a freedom to operate opinion, ensuring IP protection of assets, determining ownership of the IP, assessing the scope and strength of the IP, and protecting against unwarranted IP obligations and IP liabilities. The attorneys of Thomas | Horstemeyer have the experience, knowledge, and skill to identify and communicate the risks to our clients before they commit capital to an anticipated endeavor.

Opinions include opinions associated with patentability, trademark registrability, infringement, non-infringement, validity, invalidity, freedom to operate, designing around, and many other related issues. Thomas | Horstemeyer offers the experience and wide-ranging expertise to cover them all.

Various types of agreements are important to intellectual property (IP) owners. One of the most common is a license agreement, which enables the IP owner to commercialize IP that it may or may not be using. A license is a contract that allows one party to use IP owned by another party, typically for payment of a fee, or in settlement of a dispute. Thomas | Horstemeyer has considerable expertise in negotiating, drafting, and successfully closing all types of IP license agreements for its clients, both for commercialization purposes and in settlement of disputes and litigation. These agreements include:  Patent Licenses, Technology Licenses, Trademark Licenses, End User License Agreements, Software Licenses, and Copyright Licenses.

In addition to licensing agreements, each year Thomas | Horstemeyer negotiates, drafts, and/or reviews hundreds of all types of agreements that have IP implications, including: Non-Disclosure Agreements (NDAs), Amendments to NDAs, Work-For-Hire Agreements, Sponsored Research Agreements, Purchase Agreements for Research and Development Services, Non-Analysis Agreements, Joint Development Agreements, Supply Agreements that have IP implications, Consulting Agreements, Teaming Agreements, Manufacturing Agreements, Distributorship Agreements, Asset Purchase Agreements, Software Development Agreements, Software Maintenance Agreements, Software Distribution Agreements, Employment Agreements to Assign IP Rights, and Settlement Agreements.

In today’s complex commercial environment, it is increasingly important for businesses to understand and protect all aspects of their intellectual property rights. Thomas|Horstemeyer’s experienced attorneys assist our clients in making informed business decisions concerning their intellectual property, so they can determine how best to protect, enforce, and defend their intellectual property rights.

Our attorneys are experienced in all aspects of intellectual property protection, including negotiation and licensing, as well as litigation. And because our patent litigators have a science or engineering degree, our clients benefit from attorneys that are better equipped to understand the technology at issue.

When litigation is necessary, our extensive litigation experience enables us to effectively enforce our clients’ intellectual property rights against unlawful exploitation by others, as well as to zealously defend our clients against allegations of intellectual property infringement. Our litigation team provides a level of representation unsurpassed by other intellectual property firms and general practice firms.

Once an organization has applied for intellectual property rights, the application must be properly managed to ensure that all requirements are met. Notably, this management of the intellectual property asset must continue even after the intellectual property rights are secured to avoid loss of rights. For example, periodic maintenance fees must be paid to the U.S. government to prevent abandonment of an in-force patent. Because of the potential damage such losses can cause, Thomas | Horstemeyer carefully manages all of our clients’ intellectual property assets to ensure that no such losses occur. To this end the firm utilizes a dedicated staff and sophisticated docketing software to monitor each asset for critical dates so that all actions that must be taken to maintain the value of the assets are identified. Such management is particularly critical to organizations having a number of intellectual property assets in their portfolio.

With the enactment of the America Invents Act (AIA), the firm has been on the forefront of the AIA’s new patent challenge mechanisms, including Inter Partes Review (IPR), Covered Business Method (CBM), and Post Grant Review (PGR) trials before the Patent Trial and Appeal Board at the USPTO as well as subsequent appeals to the Federal Circuit.  By combining our substantial experience in patent litigation matters with our deep patent prosecution expertise, our clients have a distinct advantage when developing key strategies in the pursuit of a desired outcome, irrespective of whether challenging the validity of a patent as a petitioner or defending an unpatentability assertion as a patent owner.  As the PTAB continues to develop its precedent, the firm is uniquely positioned to handle these contested proceedings and help clients stay ahead of the curve in pursuit of clients’ short and long term business goals.

Intellectual property (IP) prosecution is the process through which applicants or their representatives interact with the U.S. government with the goal of securing exclusive rights for their intellectual property. Most commonly, IP prosecution is used to describe the processes of acquiring patent and federal trademark rights.

Patent prosecution is a complex and ever-evolving area of law that requires both technical and legal expertise. Before a patent application is filed, the patent practitioner must prepare a detailed patent application that will be submitted to the U.S. Patent and Trademark Office (USPTO) for consideration. In order to prepare such a document, the patent practitioner must develop an in-depth understanding of what the invention is and how it works. In addition, the patent practitioner must have strong grasp of the patent laws in order to know what the patent application should, and should not, say for a strong patent to result. These skills are also required of the patent practitioner during prosecution of the patent application before the USPTO to overcome the various rejections such applications typically receive as a matter of course. Because of these challenges, patent practitioners must have a college degree in engineering or a “hard” science and further must pass a federal patent bar exam before they can obtain the federal registration necessary to represent clients before the USPTO. Emblematic of Thomas | Horstemeyer’s commitment to the acquisition of patents for its clients, each practitioner of the firm has either an engineering or science degree and is federally registered to practice before the USPTO.

While trademark prosecution does not require an engineering or science degree, it does require great proficiency in relation to the U.S. trademark laws. Just as rejections are common during patent prosecution, trademark applications are routinely rejected by the USPTO and the trademark attorney must possess the skill and knowledge to navigate the prosecution process in order to secure the strongest possible federal registration for the client’s trade or service marks. Thomas | Horstemeyer’s trademark attorneys have a vast amount of experience in securing federal registrations and are available to our clients to assist them in federally registering their marks.