Intellectual Property

Intellectual property rights rank among the most valuable assets that today’s innovative companies and individuals can possess. Obtaining those rights, putting them to work and protecting them to the fullest extent possible are goals that must be pursued with vigor and vigilance.

Our highly regarded Intellectual Property Group was recently recognized in Chambers USA: America's Leading Lawyers for Business. The Group has extensive experience representing clients in all aspects of intellectual property law, including:

  • Patent Searches and Opinions
  • Patent Preparation and Prosecution
  • Trademark Clearance
  • Trademark Filing and Prosecution
  • Litigation
  • Copyrights
  • Transactional Work
  • Portfolio Analysis and Counseling
  • Third Party Defensive Work

Patent Searches and Opinions

Patent attorneys in Chiesa Shahinian & Giantomasi’s IP Group conduct thorough patent searches to determine whether inventions may be patentable. We also conduct patent infringement and validity searches to verify patentability and render right-to-use advice to our clients based on these searches. Our experienced counsel helps clients develop strategies to avoid infringing upon the patent rights of others while protecting the rights to their inventions.

Patent Preparation and Prosecution

CSG’s extensive experience preparing and prosecuting patent applications in many fields, including mechanical, electrical, computer, business methods, data networking, e-commerce, and optical, has resulted in our clients’ ability to build solid and successful patent portfolios throughout the world. 

With our counsel, many start-up businesses obtained patent protection on inventions that launched successful business ventures. Keeping our clients’ budgets and priorities in mind, we pursue prosecution strategies that include filing continuation applications and conducting examiner interviews to obtain allowable claims. We also handle appeals of final United States Patent and Trademark Office (USPTO) decisions as well as other proceedings before the Patent Trial and Appeal Board.

Trademark Clearance

Our IP attorneys conduct and evaluate trademark searches to determine whether marks are available for use and registration by our clients. We investigate potential problems, negotiate and take the appropriate action on behalf of our clients in order to secure rights that would otherwise be in question.

Trademark Filing and Prosecution

CSG clients benefit from our IP Group’s substantial experience in all aspects of trademark registration, including the preparation and filing of applications, the prosecution of applications through to registration and the post-registration maintenance of trademark portfolios. Our experience in this arena includes filing more than 2,000 U.S. trademark applications for clients and working closely with law firms throughout the world to manage and coordinate our clients’ worldwide trademark portfolios. Our ability to file and prosecute most applications electronically helps to maximize efficiency and minimize costs for our clients. Our extensive experience in all aspects of trademark prosecution is underscored by our success in overcoming refusals.

Litigation

CSG takes pride in its ability to favorably resolve cases in the most cost-effective manner. In addition to providing prelitigation counseling and strategy, we have successfully litigated intellectual property matters in state and federal courts throughout the U.S. Our experience covers the full range of IP-related disputes, including patent, trademark, copyright, trade secret, infringement, licensing, domain name, opposition and cancellation, and unfair competition cases. We have sought and obtained preliminary and permanent injunctive relief for numerous clients. We are regularly called upon to help resolve trademark disputes before the Trademark Trial and Appeal Board of the USPTO, as well as other tribunals such as the World Intellectual Property Organization (WIPO).

We have been successful in litigating matters for clients across a wide range of industries, including entertainment, education, apparel, sporting goods, cosmetics, technology, food and beverage, finance and others.

Copyrights

CSG advises clients in a variety of copyright matters, including registration with the U.S. Copyright Office and copyright actions in federal court. Our experience includes helping clients protect the rights to their software and other creative works.

Transactional Work

Our IP Group works closely with the firm’s Corporate Group to handle the intellectual property aspects of many complex business transactions, including IP provisions of merger agreements, including disclosure schedules. We also handle many intellectual property-specific transactions, including licensing agreements, assignments, consent and co-existence agreements, as well as domain name transfer agreements.

In the biotechnology space, we perform IP due diligence assessments relating to potential acquisitions and investments, and handle many pharmaceutical industry agreements, including master supply agreements, quality agreements, clinical services agreements, distribution agreements, clinical trial agreements, informed consents, and key opinion leader agreements. We also counsel clients on compliance with regulatory requirements relating to dietary supplements, pharmaceuticals (both small molecule and biologics), cosmetics and foods.

Portfolio Analysis and Counseling

CSG evaluates patent and trademark portfolios and counsels clients regarding the best use of resources in order to build and maintain IP portfolios. Clients ranging from large corporations with thousands of IP assets to small startup companies with small portfolios benefit from this analysis and counseling, which results in stronger and more focused IP portfolios.

Third Party Defensive Work

In this era of "patent assertion entities", all companies, both large and small, are at risk of becoming a target of a patent assertion. CSG evaluates third party claims against our clients' products and services and defends them against these assertions.