Our attorneys are experienced in writing and obtaining patents for electrical, mechanical and medical devices, as well as software and chemical compounds. Our clients include Tier One automotive suppliers, software providers, architects and builders, medical equipment manufacturers, archery bow manufacturers, and television broadcasters. We understand that our clients operate in a global economy, and we work closely with attorneys and patent agents throughout the world to provide global representation for our clients.

Clark Hill's value-added approach begins with an analysis of the client's business. We provide counsel with respect to appropriate actions to take to best protect your technology--from the early developmental stage to production or promotion. This may include preparing applications for patents, trademarks and copyrights, and the domestic and international registration of these applications. It may also involve preparing agreements with employees and key third parties who are required to help bring the technology to market. Whatever the requirement, our attorneys will work hard to understand your business model, and to perform services to assist in its successful implementation.

Patents

Typically, technology which includes functional products or methods of manufacture is best protected by one or more patents. Depending on the client's strategy, provisional or traditional utility patent applications will be prepared. These patent applications are filed with the United States Patent and Trademark Office (USPTO) to maximize protection in the United States and internationally.

Once filed, Clark Hill monitors the status of the patent application. When correspondence is received from the USPTO, we communicate with the client and determine what action is appropriate. When responding to USPTO correspondence, our goal is to ensure that the client receives the broadest protection available for the invention claimed in the patent application. During the period in which the patent application is being prosecuted, we focus on the client's continued development of the technology to optimize the value of the patent application.

Trademarks and Service Marks

When you sell a product or service, our attorneys will work with you to protect your trademark or service mark in a manner commensurate with your needs. We search public and proprietary databases of registered marks, both federal and state databases, and common law marks (those that are used, but not registered) to determine the viability of obtaining protection for a chosen mark. Based on similar trademarks and service marks currently being used, we analyze how strong the chosen mark may be, in the context of the goods or services with which the mark will be associated.

Applications for registration are then prepared and filed with the USPTO and trademark offices abroad, in order to preserve rights in the chosen mark based on your marketing plans. The requirements of each country's trademark office are different, and we provide details as to what is required to maintain a registered status in each country.

Copyrights

In the information age, copyright protection has become a strong ally of the creator of technology. Whether your interest is in software, music, literature or other media, Clark Hill attorneys will work with you to determine what protection is available, what agreements need to be in place to create an ownership interest in the copyright material, with or without transfer back rights, and how to proceed with your publication without infringing the copyrights of others. Registrations for copyrights are applied for via the Copyright Office, which is a part of the Library of Congress. Clark Hill's attorneys are experienced in preparing the appropriate application for a copyright, and we communicate regularly with our clients to obtain the proper specimens to be filed with the copyright application.

Technology Transfer

Clark Hill's approach to technology transfer recognizes that the protection of your technology is an issue the moment the technology is created. Whether the creation is by a principal, an employee, a third party service provider, or an unrelated supplier, the issue of ownership begins immediately.

We work with our clients to develop a formal strategy on how to respond to issues of technology creation and transfer. Depending on the parties involved, appropriate agreements are put in place to protect the client's investment in that technology. These could include employee agreements, assignments, exclusive and non-exclusive licenses, and non-disclosure and confidentiality agreements.

Since intellectual property may have a life that extends through decades, negotiations of these agreements include discussion of potential events that may occur during the life of the technology, thus allowing you to have an expectation as to your responsibilities and the responsibilities of other parties who may be involved. Interests in technology through these various instruments often can be perfected through filings with appropriate federal and/or state agencies. Clark Hill's intellectual property attorneys work closely with the entire Business Practice Group to ensure that your technology transfer documents coordinate with your business strategy.

Representative Clients

• Magna International, Inc.
• Intier Automotive, Inc.
• Delphi Technologies, Inc.
• Dow Corning Corp.
• Decoma International, Inc.
• Federal-Mogul World Wide, Inc.
• Tesma International, Inc.
• McLaren Performance Technologies, Inc.
• Deloitte & Touche
• Idetix, Inc.
• CertainTeed Corporation
• ePrize, Inc.