Thompson Coburn’s Intellectual Property practice group is dedicated to counseling businesses, including nonprofits such as universities, on their intellectual property and information technology needs. We work with companies in and outside the United States to protect their domestic and foreign markets.
With our guidance, clients can establish, protect, and enhance the value of their IP portfolios. Our diverse client roster ranges from start-up ventures to established industry leaders. We provide comprehensive legal services related to patents, trademarks, copyrights, and trade secrets, as well as internet and new media, e-commerce, software licensing, unfair competition, and false advertising. We have extensive experience across the emerging technology spectrum, including artificial intelligence and generative AI platforms.
We litigate IP matters in courts nationwide, including federal courts, the Federal Circuit, and before administrative bodies such as the Patent Trial and Appeal Board (PTAB), the Trademark Trial and Appeal Board (TTAB), and the International Trade Commission (ITC). We also work closely with U.S. Customs and Border Protection (USCBP) concerning goods entering the United States. Our mission is to deliver the highest quality, most responsive, and cost-effective legal counsel to our intellectual property clients.
Our IP attorneys have advanced degrees, scientific research backgrounds, and practical business experience in advanced technology industries. This enables us to quickly understand and appreciate the significance of your technical innovations, allowing us to better serve your legal needs.
Intellectual Property Enforcement
In intellectual property disputes, we represent clients in federal courts nationwide, including the Federal Circuit, which has exclusive jurisdiction over patent law appeals. Our experience extends to the International Trade Commission (ITC), a fast-moving court addressing unfair trade practices and IP infringement, as well as to administrative forums such as the Patent Trial and Appeal Board (PTAB) and the Trademark Trial and Appeal Board (TTAB).
Our team excels in leveraging complementary intellectual property rights to shape litigation strategy. Remedies often include injunctive relief and monetary damages, such as actual damages, lost profits, and reasonable royalties in patent cases, or statutory damages in trademark and copyright disputes. For willful infringement, damages can be enhanced significantly. While bodies like the ITC, PTAB, and TTAB cannot award damages, we navigate these venues strategically to achieve optimal outcomes for our clients.
Thompson Coburn also has significant experience in handling patent litigation involving non-practicing entities (NPEs). These cases were frequently filed in the Eastern District of Texas due to its plaintiff-friendly reputation, but recent trends have shifted toward many of these cases being filed in the Western District of Texas, particularly in Waco. Our familiarity with these venues and their strategic approach to NPE litigation positions us well to defend clients against such claims. In fact, we have a sustained track record with certain clients making no payment in response to NPE filings.
patents
A patent is a legal document granted by the government that provides its owner with exclusive rights to make, use, sell, offer for sale, and import an invention for a certain number of years. Patents are crucial because they:
- Protect innovations: Patents safeguard your inventions from being copied or used without permission, ensuring that you can capitalize on your innovation.
- Encourage investment: By providing exclusive rights, patents make it more attractive for investors to fund research and development.
- Enhance market position: Owning patents can strengthen your market position by preventing competitors from using your patented technology.
We provide services for all aspects of patents on behalf of our clients, including legal representation for patent prosecution, patent litigation, and post-grant proceedings.
Patent Prosecution
Our patent attorneys take pride in drafting and obtaining strong utility patents and design patents for clients. We build powerful patent portfolios for small, medium, and large companies. We greatly enjoy working closely with inventors and learning about innovative technologies to best position them for investment, growth, and/or acquisition. In particular, our patent prosecution attorneys have unique knowledge and experience with 35 U.S.C. § 101 (patent eligibility) in cases where it is raised and design patents.
Our patent attorneys have degrees and practical experience across technical disciplines including electrical engineering, mechanical engineering, chemical engineering, biotechnology, and software. Technical fields in which we have obtained patents for clients include, to name a few:
- Artificial intelligence (AI)
- Bioinformatics
- Cellular communications
- Cloud computing
- Cybersecurity
- Lidar systems
- RFID systems
- FinTech
- Generative AI
- High performance computing
- Laser systems
- Machine learning applications
- Medical imaging
- Mobile applications
- Natural language generation (NLG)
- Natural language processing (NLP)
- Optical systems
- Packet switching technology
- Signal processing
We also handle patentability searches and evaluations, freedom-to-operate patent searches, opinions on issues related to the invalidity and noninfringement of patents, and patent portfolio analysis.
Patent Litigation
Whichever side of a patent dispute you find yourself on, our patent litigators can deliver strategic, results-driven solutions. Whether you are a startup or an established corporation, and whether you are enforcing your patents against infringers or defending your products or services against infringement allegations, our experience in complex patent disputes will help you maintain your competitive edge.
Post-Grant Proceedings
After a patent has been granted, proceedings may be initiated by parties accused of infringement in an effort to have the patent office invalidate or narrow a patent.
Our post-grant proceedings attorneys handle all aspects of post-issuance proceedings before the USPTO, representing both patent owners and challengers. Leveraging the strengths of our patent prosecutors and litigators, we offer strategic assistance with:
- Inter Partes Review (IPR)
- Post-Grant Review (PGR)
- Reexamination
- Reissue
- Supplemental examination
Our team combines litigation and patent prosecution expertise, ensuring a comprehensive approach to defending and challenging patents.
We also understand that post-grant proceedings are often part of a larger patent strategy, which may include litigation in federal court. Our collaborative approach ensures that we effectively execute an overall patent strategy.
copyrights
Creativity fuels innovation, and protecting it is essential. Our comprehensive copyright services empower clients to safeguard and leverage their creative works across industries and mediums. From securing copyright protections and managing portfolios to navigating complex litigation and licensing agreements, we provide practical, strategic guidance at every turn.
Our work spans digital media, software and technology, music, visual arts, literary works, educational materials, advertising and marketing, social media, film and television, architectural works, fashion and design, video games, photography, and more. With a proven track record of serving companies of all sizes, we tailor our approach to align with your business goals — helping you turn your creativity into lasting value.
Copyright Protection: Our services include preparing and filing copyright applications with the U.S. Copyright Office and providing strategic advice on how to best protect your works, whether they are literary, musical, artistic, or digital. Our goal is to help you establish and maintain your copyright rights effectively.
Copyright Litigation: Our experienced attorneys represent clients in copyright infringement disputes in court and through alternative dispute resolution methods. We handle cases involving unauthorized use, reproduction, distribution, and display of copyrighted works. Our litigation services include pre-litigation counseling, filing lawsuits, defending against infringement claims, and negotiating settlements. We aim to protect your rights and achieve favorable outcomes.
Copyright Portfolio Management and Licensing: We offer comprehensive management of your copyright portfolio, helping you maximize the value of your intellectual property. Our services include tracking and maintaining your copyrights, advising on the best strategies for licensing works, and negotiating and drafting licensing agreements. We ensure that your copyrights are protected and leveraged to their fullest potential.
Cybersquatting: Cybersquatting is the practice of registering domain names that are identical or confusingly similar to trademarks.. We help clients recover domain names through the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and other legal avenues. Our goal is to protect your brand and prevent misuse of your intellectual property online.
Digital Rights Management (DRM): To protect and manage your digital content, our services include strategy development, implementation, content encryption, access control, license management, monitoring and enforcement, compliance and legal support, DRM Audits, training, and custom solutions.
DMCA (Digital Millennium Copyright Act): The DMCA provides a framework for addressing online copyright infringement. Our services include drafting and submitting DMCA takedown notices to remove infringing content from websites, responding to DMCA counter-notices, and advising on safe harbor provisions to limit liability for online service providers.
trademarks
Your brand is your identity, and we’re here to help you protect it. Our trademark services empower businesses to confidently navigate the complexities of trademark law, both in the U.S. and across international markets. From conducting in-depth trademark searches to negotiating strategic licenses and assignments, we provide practical solutions at every stage. Whether you’re selecting a new trademark, managing infringement risks, or resolving disputes, our team is committed to safeguarding your brand and helping it thrive.
Trademark Prosecution: We assist in preparing and filing trademark applications, responding to office actions, and maintaining trademark registrations. We work closely with clients to develop strategies that maximize the protection of their trademarks in the U.S. and globally.
Trademark Portfolio Management and Licensing: Our clients range from those with large trademark/service mark portfolios, which we manage through a network of foreign associates covering every country where trademark protection is available, to smaller companies with fewer but equally important trademarks to protect. We also negotiate and draft trademark licenses and assignments to help clients maximize the value of their trademark assets.
TTAB Proceedings: We represent clients in proceedings before the Trademark Trial and Appeal Board (TTAB), including appeals of refusals to register their trademarks and opposition, cancellation, and expungement proceedings. Our team has extensive experience navigating the complexities of TTAB procedures to protect and enforce our clients’ trademark rights.
Trademark Litigation: We have a wealth of experience in protecting clients’ trademarks through litigation, having successfully litigated trademark-related matters in venues across the country. Our litigation services cover all aspects of trademark disputes, including infringement, dilution, and unfair competition claims.
Uniform Domain-Name Dispute-Resolution Policy (UDRP) Proceedings: We have successfully recovered numerous domain names for clients, ensuring their trademarks are protected in the digital space.
Border Protection: We work with U.S. Customs and Border Protection (USCBP) to prevent the importation of infringing goods. The process for recording trademarks with USCBP involves submitting an application with information about the client’s trademark registrations and products. After that process is complete, USCBP will monitor and seize counterfeit goods at U.S. borders, providing an additional layer of protection for brands.
trade secret protection and litigation
Whether you are unsure what your trade secrets may include or how to protect them, or you need to assert or defend against claims of misappropriation, Thompson Coburn can help. Our Intellectual Property lawyers can provide guidance as you create, protect, and enforce trade secrets, ensuring valuable information remains secure and your competitive edge stays sharp.
We work closely with clients nationwide to develop robust strategies to protect their most valuable assets, including through the following:
- Recognizing and categorizing trade secrets.
- Crafting tailored policies and procedures to safeguard trade secrets, including confidentiality agreements and employee training programs.
- Ensuring clients adhere to industry standards and state and federal legal requirements to maintain the integrity of their trade secrets.
When trade secrets are threatened or misappropriated, our team is prepared to take decisive action across the country. We offer:
- Litigation services in state and federal courts to address trade secret misappropriation, seeking remedies such as injunctions and damages or defending against claims of misappropriation.
- Alternative dispute resolution services including mediation and arbitration, to resolve trade secret disputes efficiently.
- Thorough investigations to uncover and address potential breaches of trade secret protections.
intellectual property licensing
Intellectual property licensing is a crucial aspect of managing and commercializing brand names and creative and innovative assets.
We help our clients — ranging from artists to business owners to inventors — strategically negotiate licensing arrangements that protect their intellectual property and enable them to generate revenue and expand their market reach, or allow them to use the intellectual property rights of others.
Copyright Licensing: We work with clients to negotiate license agreements that protect and monetize their works of authorship or that allow them to use the works of others. We have negotiated license agreements for many types of works, ranging from the use of a single photograph to complex software licensing.
Patent Licensing: We offer specialized patent licensing services to safeguard your innovations and maximize their commercial potential. This includes drafting detailed agreements that outline the scope and terms of use and negotiating fair royalty rates and payment structures.
Trademark Licensing: We develop license agreements with clients to allow them to ensure proper use, maintain the integrity of their brands and maximize the commercial value of their trademarks. We also negotiate license agreements that allow our clients to use the trademarks of others so that our clients can grow their business and otherwise benefit from the value of another’s brand.
media, advertising & internet
The media and communications industry has undergone a significant transformation for both content creators and users. Media companies face intense competition and must navigate a growing number of platforms and legal issues to deliver their messages effectively. Thompson Coburn’s Media, Advertising and Internet group attorneys are dedicated to supporting this dynamic industry.
We provide comprehensive legal counsel to new and traditional media clients, helping them communicate effectively while minimizing legal risks. This includes copyright and First Amendment protections; privacy, publicity, and security laws; advertising and marketing compliance; pre-publication review; litigation; artificial intelligence use, and numerous other areas.
Read more about our services in Media, Advertising and Internet.
