McDermott Will & Schulte, a global law firm

Intellectual property is a core driver of enterprise value. Across every stage of your innovation life cycle – from development and protection to commercialization and enforcement – our intellectual property lawyers support your growth. We navigate the complexities of IP law to help you attract investment, strengthen your market position, and drive long-term value.

Our team includes more than 100 lawyers and professionals globally, and most of them hold technical degrees in science and engineering. We partner with you to secure, monetize, and defend the IP rights that drive your business forward – from patents and trade secrets to trademarks and copyrights.

Through a coordinated global strategy, we build IP portfolios designed to protect your core technologies, products, and brands across jurisdictions. We also develop frameworks to protect trade secrets and structure sophisticated licensing and enforcement strategies to help you monetize your IP assets.

When disputes arise, our IP lawyers represent you in high-stakes matters that can impact market access and put revenue streams at risk. We have significant experience enforcing and defending IP rights across key forums, including US federal district courts and appellate courts, as well as proceedings before the United States Patent and Trademark Office (USPTO) and US International Trade Commission (ITC). We also represent clients in courts across key jurisdictions in Europe and Asia.

In highly regulated sectors – including healthcare and life sciences – we guide you through the intersection of IP and regulatory frameworks to support commercialization and preserve access to critical markets. We also lead IP due diligence in high-value transactions where IP assets are central to valuation, including M&A deals, investments, strategic collaborations, and licensing arrangements.

In competitive markets, IP assets play an essential role in differentiating your business and protecting your market position. Through a comprehensive and integrated strategy, our IP lawyers help you build and sustain a competitive advantage across global markets.

The ease of inventing and going to market has created a competitive global marketplace. Under these conditions, it has never been more important to protect and enforce your valuable patent assets throughout the intellectual property (IP) lifecycle to preserve your edge and safeguard your business value.

To mitigate risk and capitalize on opportunities that advance your business goals, you need a partner in the courtroom and the boardroom. We assemble the best team possible to deliver business-driven solutions for existing challenges, as well as offer innovative strategies that will help you stay ahead of the competition. Our global IP practice includes more than 100 lawyers and professionals who offer a mix of business-savvy and technical skills to achieve success for clients. Nearly 75% of our members have technical degrees in science and engineering, and more than one-third have advanced degrees in relevant technical disciplines such as electrical and mechanical engineering, computer science, physics, materials science, biotechnology, biology, chemistry, immunology, and genetics.

As the patent litigation landscape  grows increasingly complex, with recent precedent-setting decisions from the US Court of Appeals for the Federal Circuit and the Supreme Court of the United States, we offer an IP litigation team well known for protecting and enforcing patents globally through complex litigation. We handle high-stakes disputes across geographies, including the US federal district and appellate courts, the Supreme Court, the US International Trade Commission (ITC), the US Patent & Trademark Office, the Patent Trial & Appeal Board (PTAB), and the courts of Europe and China.

We have a longstanding record of achieving favorable outcomes for clients in high-profile US venues for patent litigation, including in the Western and Eastern Districts of Texas, the District of Delaware, the Northern and Central Districts of California, and the Eastern District of Virginia. We have also achieved key successes in cases against non-practicing entities (NPEs), as well as in bet-the-company patent litigation.

Several of our team members have deep industry experience and have successfully litigated disputes involving technologies such as semiconductors, telecommunications, software, computer hardware, pharmaceuticals, and medical devices. This helps us effectively explain complex technology and IP legal principles to both judges and juries in a way that increases the likelihood of achieving favorable results on your behalf. We can also resolve disputes through favorable settlement negotiations.

In all matters, we are fearless and relentless advocates for your company, here to protect and enforce your patent assets throughout your business lifecycle.

As a global company, we rely on [the firm] without hesitation for all trademark-related issues, large and small. They are incredibly responsive, creative, ethical, and grounded.
– Client Testimonial in U.S. News – Best Lawyers, “Best Law Firms”

Your business relies on the strength of your brand, and trademarks and copyrights play an important role in protecting that brand throughout the intellectual property (IP) lifecycle. Competitors can dangerously impact your bottom line when they encroach on your corner of the marketplace and use (or misuse) your trademarks and copyrights, capitalizing on your hard-earned goodwill and reputation. False or misleading claims made by those same competitors when advertising to consumers could also cause irreparable damage to your brand.

To protect your company and your brand, you need a trusted advisor by your side to enforce your trademarks, safeguard your copyrightable material, and defend your intangible assets. You need us.

Our lawyers are business strategists who excel in IP litigation, and clients trust us with their high-stakes trademark, copyright, and advertising disputes. We operate under one of the strongest and most active global trademark and copyright practices.

Our established global legal platform provides seamless cross-border collaboration between our US and European offices and our network of lawyers across more than 150 countries. We can mobilize instantly in nearly any region of the world to tackle the most challenging infringement issues as quickly as possible.

Litigation

Our lawyers have knowledge of the laws that affect brand owners and the experience to enforce claims, when necessary, in US state and district courts and appellate courts, as well as before regulatory bodies and arbitration tribunals. We help clients with:

• Claims of trademark, copyright, and trade dress infringement, as well as publicity, privacy, and false advertising (including those brought under the Lanham Act) in federal district, appellate, and state courts
• Federal court litigation under the Anticybersquatting Consumer Protection Act (ACPA), including the ACPA’s in rem provisions and traditional trademark and unfair competition causes of action
• Domain name disputes involving pre-dispute negotiations and Uniform Domain-Name Dispute-Resolution Policy proceedings before the World Intellectual Property Organization and FORUM (formerly known as the National Arbitration Forum)
• Proceedings before regulatory bodies, such as the National Advertising Division, the US Food and Drug Administration, and the Federal Trade Commission

Cross-Border Enforcement and Anti-Counterfeiting

Our lawyers work with US Customs and Border Protection (CBP) on behalf of many clients to combat the importation of counterfeit goods by:

• Recording our clients’ trademark and copyright registrations with CPB and providing the information necessary to seize shipments of counterfeit goods
• Holding educational meetings with CPB agents to help them identify suspicious shipments and distinguish our clients’ genuine goods from counterfeit products
• Collaborating with global trademark and copyright counsel for quick emergency filings

Trademark Oppositions and Cancellations

We advise trademark applicants and opposing parties in filing and defending opposition and cancellation proceedings before the Trademark Trial and Appeal Board and aide in:

• Navigating the Federal Rules of Civil Procedure and strict timelines
• Conducting effective discovery
• Drafting compelling motions
• Handling necessary depositions
• Arguing cases to the relevant judicial panels

We have helped several trademark holders protect their marks and prevent competitors and infringers from using them unlawfully.

[They] boast a large, integrated crew of trademark attorneys that will give any competitor a run for its money . . . [the firm is] an IP dynamo that offers wall-to-wall support around the globe.
– World Trademark Review

Building and protecting the identity and reputation of your brand is paramount. Whether you are launching a new product or safeguarding your brand from new competition, it’s essential to partner with strategic trademark counsel.

That’s where we come in. Our business-first perspective makes us uniquely equipped to support all aspects of your company’s growth. From global trademark registration and enforcement to identifying and licensing copyrightable material and resolving fair use disputes, we are deeply invested in your success.

We counsel hundreds of companies – from Fortune 100s to startups – on the full spectrum of their international trademark and copyright needs, protecting the integrity of some of the world’s most celebrated brands and creative works across various industries. Our deep knowledge of your key challenges, competitors, and market dynamics allows us to customize our advice to help you go further.

Our global intellectual property team works quickly and efficiently across our offices in the US and Europe to meet your needs. Whether you're dealing with complex trademark and copyright issues or need an expedited filing, we offer around-the-clock collaboration to ensure the best results.

Clearance, applications, and portfolio management

Our copyright and trademark lawyers offers services that span all aspects of portfolio management, including:

• Advising on the clearance, prosecution, and registration of copyrights and trademarks before the US Patent and Trademark Office and the US Copyright Office
• Advising on prioritizing brand protection resources and helping clients maximize their trademark and copyright protection budgets
• Identifying and addressing gaps in global trademark and copyright portfolios through strategic global protection and maintenance, as well as identifying trademarked and copyrighted assets when conducting due diligence in transactions
• Advising on brand architecture, rebranding, brand revitalization, brand modernization, domain name portfolio management, and other sophisticated brand enhancement services

Advertising and promotions

Leveraging our understanding of the complex federal and state statutes and regulations that govern the marketing, labeling, promoting, and advertising of products and services, we assist our clients by:

• Reviewing and negotiating contracts and copy proposed for advertising, labeling, sweepstakes, contests, publicity and liability releases, and other types of promotions
• Ensuring that terms explicitly prevent potential violations of relevant statutes, future litigation from competitors or consumers, or potential investigations initiated by the Federal Trade Commission
• Collaborating with our regulatory lawyers when dealing with the US Food and Drug Administration and trade regulation
• Navigating right of publicity and right to privacy issues and considerations related to the use of a person’s name, image, and likeness in branding

Complex Licensing and Co-Branding

We frequently provide guidance on:

• Identifying, protecting, and licensing copyrightable material
• Clearing rights and negotiating licenses around other works
• Securing brand extensions to new goods and services
• Co-branding opportunities with other brand owners
• Franchising opportunities for better trademark visibility and revenue enhancement

Our copyright and trademark lawyers also work closely with the firm’s international tax and corporate advisory practices to provide strategic counseling on the global trademark aspects of complex, high-profile transactions, including acquisitions, spin-offs, and corporate restructurings involving the disposition of billion-dollar brands.

Domain names

An authorized Trademark Clearinghouse agent, we offer a wide array of domain name services, including:

• Domain name acquisition and recovery
• Strategic portfolio assessments
• Online monitoring for unauthorized registrations
• Representation in domain name disputes before US federal district courts, the Internet Corporation for Assigned Names and Numbers, the World Intellectual Property Organization, and FORUM (formerly known as the National Arbitration Forum)

Social media and e-commerce issues

Savvy brand owners recognize that social networking and viral marketing create extraordinary opportunities for companies and their brands to interact more directly with consumers. We help our clients with:

• Integrating legal counsel in a comprehensive way when it comes to marketing, communications, and other critical business functions to effectively (and in some cases, aggressively) launch a social media campaign
• Advising clients on fair use and distribution issues in a digital environment
• Developing tools for quickly and efficiently identifying, managing, and addressing unauthorized use (or misuse) of your brand online by third parties, including:
  • Handling takedowns or other online infringement notices across online marketplaces and social media platforms
  • Navigating domain name disputes

The McDermott Will & Schulte attorneys truly understand the science of our patents, give us personalized attention, and respond quickly to our questions.
– Chambers USA, Life Sciences

As a life sciences company, your intellectual property (IP) is your most valuable asset—it’s what propels your growth, drives your success and sets you apart from competitors. But it may also be your most vulnerable asset.

How you commercialize your innovation and gain compliance is crucial for the success of your business. As competitors constantly work to capture your share of the market, it is imperative that your IP is protected to maximize its value. Our business-first perspective makes us uniquely equipped to help our clients build formidable IP portfolios, maximize their value and enforce or defend them in litigation.

Our more than 140 multidisciplinary life sciences lawyers are here to help. In addition to legal experience spanning the world’s foremost life sciences companies to its most innovative startups, the majority of our IP lawyers hold advanced degrees in the life sciences fields including in cellular and molecular biology, chemistry and organic chemistry, biochemistry, biomedical engineering, chemical engineering, immunology, pharmacology and genetics, among many other areas.

We provide the full array of services to protect and leverage your IP assets:

• Patent protection and enforcement
  • Patent litigation, including Hatch-Waxman Act litigation
  • Patent portfolio management
  • Infringement, validity and freedom-to-operate opinions
• Trademark and brand management
  • Initial strategy and clearance, trademark registration
  • Portfolio management
  • Seeking and obtaining both brand and generic names, United States Adopted Names (USANs) and International Nonproprietary Names (INNs)
  • Domain name, social media, advertising, unfair competition and trade dress matters
  • Enforcement, including trademark, copyright and trade secret litigation
• IP monetization and transactions
  • Licensing and collaboration
  • M&A and finance
  • Outsourcing and licensing agreements

Let us help you go further.

Renowned for [their] role in negotiating and documenting major deals, focusing on global, strategic IP transactions and patent counseling.
– IAM Patent 1000

Your intellectual property (IP) assets, including patents, trade secrets, brands, copyrightable works, data compilations, software code, and proprietary technology, are a crucial component of any business transaction involving your company.

Our IP transactions and licensing team is by your side, whether you are considering an IP sale, acquisition, or license, or you are involved in a restructuring, merger, spin-off, or financing. We understand the legal considerations of these complex transactions, as well as the nuances of this industry and other business considerations.

Our approach

We advocate relentlessly on your behalf through all stages of a transaction, including negotiations at the deal table. Our approach includes:

• Handling IP-related due diligence and partnering with clients to identify potential solutions before moving to the next phase of the deal
• Bringing deep technical understanding and sharp business acumen to licensing agreements, restructurings, integrations, and other strategic transactions involving IP
• Advising on the IP components of mergers, acquisitions, and sales of privately and publicly owned companies and the formation of joint ventures while striving to complete the deal on time and within budget.

Who we represent

Our IP team operates across industries and geographies to bring you a winning combination of experience and knowledge. Strategic collaborations with the firm’s leading corporate, tax, health & life sciences, and regulatory practices ensure our comprehensive support. We focus on providing highly skilled, insightful counsel involved in the licensing of IP assets across various sectors, including:

• Financial services
• Consumer products
• Health and life sciences
• Media, entertainment, and sports
• Technology
• Universities and research institutions

Our areas of focus

Our IP services cover the full spectrum of transactions and agreements, ensuring your assets are strategically managed and leveraged for maximum value.

• Standalone IP transactions: We represent clients in standalone IP transactions, including acquisitions, investments, licenses, strategic alliances, joint ventures, collaborations, royalty buy-outs, and technology transfer agreements. Our IP lawyers have decades of experience performing due diligence on both the investor and company side, negotiating deal terms, advising on the impact of pending or threatened third-party disputes, and drafting documents for various transactions.
• Collaborative deals: Collaborating with our corporate, tax, and regulatory practices, we handle sophisticated transactions involving key IP assets. Our IP lawyers often take a lead role at the deal table, understanding the unique perspectives of stakeholders to negotiate terms that meet our clients’ business goals. When you need critical IP issues weighed appropriately in a deal setting (which may include ongoing third-party disputes or threatened litigation), we excel at communicating these complexities to executive teams, boards of directors, and other internal stakeholders.
• Strategic commercial agreements: We advise our clients on a broad range of commercial contracts, including marketing and distribution agreements, license agreements, and service agreements, as well as clinical, manufacturing, and supply agreements.
• Name, image, and likeness agreements: Our team has a sophisticated understanding of the right of publicity and right to privacy issues and considerations related to the use of a person’s name, image, and likeness in branding. We frequently advise our clients on rights of publicity licensing matters for new partnerships and endorsements.
• Complex licensing: IP can be a source of revenue that expands profitability at limited additional expense. Working closely with the firm’s international tax and corporate advisory practices, our lawyers provide guidance to clients on the global IP aspects of high-profile transactions and restructurings.