Intellectual Property & Technology

Clark Hill’s Intellectual Property & Technology Team offers a full range of services to better serve clients’ needs in the fast-growing field of IP Law. Our attorneys and other professionals prepare, file, and prosecute patent, trademark and copyright applications and protect technology through litigation, licensing, and opinion counseling. Knowing that intellectual property decisions are ultimately strategic business decisions, we take the time to understand the big picture, weigh all of the options and advise you on a course of action that meets your business goals.

Our attorneys are experienced in writing and obtaining patents for electrical, mechanical and medical devices, as well as software and chemical compounds. We represent small start-ups and medium-sized companies, as well as multi-national corporations, hospitals and universities. Our clients operate in a broad range of industries, including, to name just a few, automotive, agriculture, energy, healthcare, manufacturing, consumer products, medical equipment, entertainment, printing and publishing, fasteners, food preparation equipment, retail, telecommunications, technology and software development, and transportation products.

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. We commonly supervise a network of foreign associates to obtain and protect intellectual property rights around the world.

Our lawyers assist clients in maximizing return on their investment in intellectual capital by:

  • Preparing and prosecuting patent applications
  • Obtaining copyright and trademark registrations
  • Negotiating license agreements
  • Counseling on mergers and acquisitions
  • Enforcing IP rights against infringers

We work closely with business executives to craft and implement business solutions in US and greater North American markets, as well as in Central and South America, Canada, Asia and Europe. We assist clients in implementing IP management programs so that research and development expenditures yielding important innovations are protected from competitors. In addition to protecting IP assets, we advise clients on their exploitation through commercial transactions, including licensing in/licensing out, joint development agreements, outsourcing agreements, technology transfers, joint ventures, and strategic alliances. We also assist clients in negotiating non-competition, confidentiality, employment, and consulting agreements.

Protecting our clients’ intellectual property rights from infringement, misappropriation, dilution, and counterfeiting is our top priority. Our long-standing reputation for the ability and willingness to try cases enhances our ability to achieve negotiated solutions.

Clark Hill PLC is a full-service law firm that is deep enough to handle the most complex matters, focused enough to give you the right tool for the job and small enough to care about client service. 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 advice 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.

Experience

Acted as counsel for prominent health care company in patent infringement actions involving comprehensive health care management system.
Acted as counsel for medical device manufacturer in patent infringement litigation involving powered medical injectors and associated syringes.
Cross-examined witnesses in successful trade secret action against large multi-national biochemical company.
Handled claim construction phase of patent infringement litigation involving prepaid calling cards and systems.
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.
Acted as lead counsel in patent infringement action involving feedthrough filter capacitors for use in pacemakers.
Acted as lead counsel in patent infringement litigation involving electronic measurement for marine propellers.

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.

News
Sixty-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 Attorneys Named to DBusiness Magazine's 2018 Top Lawyers ListClark Hill PLC Receives National and Regional Tier 1 Rankings in the 2018 Edition of Best Lawyers, “Best Law Firms”Clark 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 AssociationClark Hill Attorneys Donald A. Shindler, John L. Hines Jr. and Jillian B. Steinberg Presented “Ethics and the Use of Social Media” to the Chicago Mortgage Attorneys Association January 25, 2016David Ries and Jennifer Woods to present "Recovery from Identity Theft: Legal and Practical Considerations" Sixty-Six Clark Hill Attorneys Selected for the 2015 Super Lawyers Business EditionClark Hill Attorney Timothy M. McCarthy Presented at Motor & Equipment Remanufacturers’ Association Joint Council Meeting on August 18, 2015Clark Hill Attorney John L. Hines Jr. to Discuss E-Signatures at ABA Webinar August 19, 2015Clark Hill Attorney John L. Hines, Jr. Presented on “E-Signatures: How the Law of Contracts is Changing,” a Webinar Co-sponsored by the ABA Law practice Division and the American Law Institute Continuing Legal Education Intellectual Property Attorney Kevin S. Sprecher Joins Clark Hill ChicagoClark Hill Attorneys Scott N. Schreiber & Shannon L. Deeby Presented on Intellectual Property & Bankruptcy at the 32nd Annual National CLE Bankruptcy Conference Clark Hill and 4Discovery Team up to Present a Webinar on Mobile Devices - Their Structures and Data Vulnerabilities January 21, 2015Clark Hill Chicago Attorney John L. Hines, Jr. Elected Vice-Chairman of Erikson Institute’s Board of TrusteesChannel 7/WXYZ Features Clark Hill Attorney Jenice Mitchell Ford on the Primary ElectionClark Hill PLC Continues to Grow as Five New Additions Join the Chicago TeamIntellectual Property Attorney John S. Paniaguas Joins Clark Hill ChicagoClark Hill Attorney John L. Hines, Jr. to Present on "The Legal Issues of Social Media: It's Complicated," hosted by the Northwestern Law Alumni Club of ChicagoClark Hill PLC Hosts Technology Leaders Event with Amazon Web Services and CloudnexaClark Hill Attorney John L. Hines, Jr. to Present at CloudCast ’14 – January 30, 2014Clark Hill Attorney John L. Hines, Jr. Presented at the Cloud Security Alliance Congress 2013 on Purchasing Cloud Services: Anatomy of a Cloud Transaction - December 12, 2013Clark Hill Attorneys John L. Hines, Jr. and Patricia M. Sulzbach Presented to Association of Corporate Counsel Western Pennsylvania Chapter on Protecting Your Online Reputation - December 6, 2013Clark Hill Attorneys William J. Kohler and Jennifer Woods to present at the International Fasteners Institute