Practice Groups

Jackson DeMarco Tidus Peckenpaugh

The Intellectual Property ("IP") Practice Group at Jackson DeMarco Tidus Peckenpaugh ("JDTP") represents individual inventors and start-up companies, Fortune 500 companies, major software developers and technology super-giants, as well as smaller and newer businesses concerned with protecting their technology portfolios and industrial secrets. JDTP's IP attorneys are technically sophisticated with diverse backgrounds, which complement their years of experience. The firm's IP attorneys offer clients personalized attention to help identify and protect IP assets, ranging from patents to trademarks to copyrights to trade secrets, as well as to provide a full range of counseling, prosecution, licensing and litigation expertise concerning the procurement, protection and enforcement of IP rights.

Patents

Patent protection is available for "anything under the sun that is made by man," and covers machines, compositions of matter, plants and animals, as well as methods, including business methods. JDTP's highly experienced patent prosecution attorneys have extensive scientific expertise and are registered to practice before the United States Patent and Trademark Office. Our attorneys serve clients by initially assessing issues of patentability, then preparing and prosecuting patent applications. The attorneys in the IP Practice Group also counsel clients regarding infringement and validity issues. The firm's IP attorneys have been quoted in the New York Times on the patentability of living things, such as seeds; have advised a foreign electronics manufacturer on the introduction of its LCD technology in the United States; and have had a patent on a new type of antimicrobial agent featured in Scientific American.

Trademarks

Trademarks serve as source identifiers for all manner of products and services. The firm's trademark attorneys have extensive experience in matters relating to the selection of appropriate words, names, symbols, shapes, and colors to represent the client's businesses and products; researching the availability of selected trademarks and service marks; and filing applications to obtain trademark registrations.

Copyrights

JDTP'S copyright attorneys counsel clients regarding all aspects of copyright law including, evaluating copyrightable subject matter, assessing the scope of protection, and providing assistance in securing registration in the Copyright Office. Copyright protection is available for a remarkably diverse range of works of original authorship. The firm has asserted its clients' copyrights and protected such diverse works as fabrics, photographs, and training videos. The attorneys in the IP Practice Group also provide counseling on issues ranging from securing full title and ownership of works created by others, to working with independent contractors, to infringement avoidance strategies. JDTP's transactional work includes software development and licensing, merchandise licensing, and publishing contracts.

E-commerce

In this Internet era, JDTP's IP attorneys provide skilled counseling in complex, emerging areas such as domain name selection, dispute resolution, fair use, linking, and related e-commerce issues. Attorneys from the firm's IP Practice Group are committed to staying ahead of emerging issues of interest to the firm's clients and participate on the International Trademark Association Committee responsible for Internet affairs and other similar e-commerce leadership organizations.

Licensing and Technology Transfer/Due Diligence

Licensing products and forming alliances with others is often a central element of a business plan. JDTP's attorneys are experienced in domestic and international technology transfer and licensing transactions in various areas of technologies, including software, Internet, e-commerce, computer hardware, manufacturing, life sciences, medical devices, and biotechnology. The attorneys in the firm's IP practice group prepare, negotiate and handle transfer and licensing agreements, software, hardware or technology licenses, online and e-commerce contracts, disclaimers, legends and privacy policies, confidentiality matters, non-competition and similar agreements, and are experienced in resolution of disputes arising under such agreements. Where the business plan includes the sale of all or a part of the business in a private equity deal or a public offering, our attorneys can provide comprehensive intellectual property due diligence services to support the transaction.

Trade Secrets/Unfair Competition/Anti-Trust

Trade secrets constitute valuable commercial rights that must be protected, particularly in the technology, biotechnology, financial services, and manufacturing industries. JDTP's IP attorneys provide advice on various aspects of protecting trade secrets, including the key decision as to whether a given technology should be patented or maintained separately as a trade secret. Furthermore, the firm's attorneys draft nondisclosure and transfer agreements, as well as agreements between an employer and employee to effectively protect an employer's trade secrets.

The hiring or loss of a key executive is a critical transition for a company. JDTP's IP attorneys, as well as attorneys in the firm's Employment Law and Litigation groups can provide valuable and often preventative advice during these important times. By following specific guidelines for hiring key employees, including providing advice to the key employee on how to leave their prior employer, companies can often prevent very costly and highly disruptive trade secret and unfair competition litigation.

The attorneys in the IP group also advise on all aspects of anti-trust law and its impact on IP transactions and litigation, including litigating false advertising and other unfair competition cases.

Litigation/Alternate Dispute Resolution

JDTP's attorneys include experienced litigators who possess the essential combination of in-depth technical knowledge; intimate familiarity with IP and unfair competition laws; and the well-developed courtroom skills needed for successful IP litigation, both domestic and foreign. The attorneys in the IP Practice Group have the expertise and resources to litigate complex, multi-million dollar cases as well as smaller disputes for both mega-sized corporate clients and technology start-ups. The firm's IP attorneys recognize, however, that advocacy must be balanced with prudent advice when a client's best interests are served by settlement, alternative dispute resolution, or other alternatives to litigation. The IP attorneys at JDTP have successfully litigated cases involving patent, trademark, copyright, trade secret, unfair competition and anti-trust matters, and where appropriate resolved disputes through mediation and arbitration.

The firm's attorneys have been called upon in patent disputes ranging from herbicides to food products to computer monitors to automotive wheels. Among our attorneys' trademark successes are the defense of the trademark of an international monetary agency and the successful challenge of a preliminary injunction enabling the firm's client to use the name of its choice for a new national magazine. Among the firm's attorneys' copyright successes was the summary dismissal of a charge of infringement based on the content of the Website of a national retailer. Our attorneys also have obtained favorable decisions for the firm's clients enjoining unfair competitive acts.

International

Developing IP portfolio assets for businesses is crucial in today's increasing global competition. JDTP's attorneys understand the necessity of devising comprehensive strategies to fully develop and protect the value of IP portfolios across geographic markets and national borders. Accordingly, we have an established network of foreign associates who will help clients obtain and enforce IP rights worldwide.