Intellectual Property Prosecution

Clark Hill intellectual property attorneys offer comprehensive legal services in the area of patent, trademark, and copyright. Our attorneys are experienced in both the prosecution and litigation of intellectual property matters.


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, we monitor 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 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.


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, our 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 copyrighted 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 via the Copyright Office, which is a part of the Library of Congress. We are experienced in preparing the appropriate application for copyright, and we communicate regularly with our clients to obtain the proper specimens to be filed with the copyright application.


Our attorneys are experienced in all aspects of intellectual property litigation in the federal and state court systems, as well as within the USPTO. Our attorneys will work with you to evaluate the strengths and weaknesses of your intellectual property assets concerning both enforcement of, and defense against assertions of infringement by third-parties.

Based on our clients' business objectives and goals, we provide valuable consultation on whether, where, and to what extent intellectual property should be pursued to best achieve those goals and objectives.


Acted as lead counsel in patent infringement action involving feedthrough filter capacitors for use in pacemakers.
Acted as lead counsel in patent infringement action against leading copier company and obtained very favorable settlement for client.
Filed and successfully prosecuted numerous U.S. and foreign applications to register trademarks and service marks for many clients, including large national household appliance manufacturer.
Handled claim construction phase of patent infringement litigation involving prepaid calling cards and systems.
Cross-examined witnesses in successful trade secret action against large multi-national biochemical company.

Intellectual Property Litigation - Represented major health insurance company in suit to compel private arbitration of dispute under Trademark Act and alleged breach of fiduciary duty regarding alleged diversion of managed care business and use of famous trademark in connection with alleged diversion.

Acted as counsel for medical device manufacturer in patent infringement litigation involving powered medical injectors and associated syringes.
Acted as counsel for prominent health care company in patent infringement actions involving comprehensive health care management system.
Acted as lead counsel in patent infringement litigation involving electronic measurement for marine propellers.
Clark Hill PLC Receives National and Regional Rankings in the 2021 Edition of Best Lawyers “Best Law Firms”Clark Hill Attorneys Selected for Inclusion in the 2021 Edition of Best Lawyers in AmericaClark Hill Lawyers Named 2020 Leading LawyersClark Hill Attorneys Named 2019 Michigan Super Lawyers & Rising StarsSixty-Six Clark Hill Attorneys Named 2018 Michigan Super Lawyers & Rising Stars143 Clark Hill Attorneys Selected for Inclusion in the 2019 Edition of Best Lawyers in AmericaIntellectual Property Attorney Michael Bednarek Joins Clark Hill’s Washington, DC office Clark Hill Attorney Russell E. Cass to Speak on the Supreme Court’s Recent Landmark Patent Decisions in Oil States and SAS Institute on May 2, 2018Sixty-Seven Clark Hill Attorneys Named 2018 Leading LawyersClark Hill PLC Receives National and Regional Tier 1 Rankings in the 2018 Edition of Best Lawyers, “Best Law Firms”Clark Hill Attorneys Named to DBusiness Magazine's 2018 Top Lawyers ListClark Hill Attorney John L. Hines, Jr. Named Board Chair of the Erikson InstituteClark Hill Attorney Russell E. Cass to Moderate Federal Circuit Bar Association Webinar on October 26, 2017Clark Hill Attorney Russell E. Cass to Moderate ABA IP Litigation Committee Roundtable on October 13, 2017Intellectual Property Attorney Russell E. Cass Joins Clark Hill PLC Clark Hill Attorney David J. Marr Named 2017 Distinguished IP Alumni by Chicago-Kent College of Law Alumni Association Clark Hill Attorneys John L. Hines, Jr. and John S. Paniaguas Author Chapters in IICLE 2017 Edition of “Intellectual Property Law”Clark Hill Attorney John L. Hines Jr. will co-present “Digital Transactions: The Global Legal Framework for E-Signatures and Records” Sponsored by the American Bar Association