Innovation Law

Wood & Lee advises its clients on all legal aspects of intellectual property development, acquisition, prosecution, protection and strategy. Drawing from both transactional and litigation backgrounds, our lawyers routinely assist clients with securing the rights in the intellectual property necessary both to operate their existing business and to enter new markets.

Our lawyers have extensive experience in securing the ownership of intellectual property (whether through in-house or outside development) and then developing strategies for protection of that intellectual property through selective use of governmental registrations, contracts and litigation. We help our clients implement those strategies and ensure that the applicable filings, policing and protection activities are appropriately prioritised. Our lawyers have in-depth knowledge and experience, which allows us to help our clients avoid common pitfalls and gain protections to safeguard their intellectual property rights.

Intellectual Property Asset Transfers and Monetisation

Wood & Lee lawyers are frequently called upon to assist with intellectual property transfers and monetisation. We have the experience necessary to ensure that issues in traditional purchases and sales (whether alone or as part of a larger acquisition) are thoroughly vetted and properly covered, including issues related to chain-of-title, joint ownership, infringement and liens.

Our lawyers have the necessary business, industry and legal understanding to provide valuable counsel on how best to structure the transaction with the specific assets and economic environment in mind, whether as a securitisation, a royalty sale, or a secured loan. Our lawyers handle the financing and securitisation of intellectual property assets ranging from pharmaceuticals to movies. Our lawyers represent borrowers, lenders and insurers. We also can help clients find creative solutions to financing concerns, and can structure licensing, joint venture, and other relationships in the place of or in addition to secured financing.

• We handle all types of agreements and ventures, including joint venture and strategic partner relationships; distribution, sales, co-marketing and co-promotion agreements; supply and manufacturing agreements; Internet and multimedia license agreements; IT and business process outsourcing agreements; and confidentiality and material transfer agreements.
• We possess significant experience developing global IP protection and technology commercialisation strategies for a strong international client base.
• We are supported by a recognised IP litigation team with extensive experience handling patent issues underlying IP transactions.

Intellectual Property Transactions

More than ever, technology and life sciences companies rely on strategic alliances as a major means of financing for research and development and for validating technology, expanding product pipelines, commercialising products and penetrating domestic and global markets. Recognising the increasing significance of these transactions to the growth of our clients, our lawyers handle:

• commercialisation of intellectual property
• procurement of technology, data and tools
• manufacturing and business process outsourcing
• domestic and international technology-related matters

Our lawyers have sophisticated specialised experience in strategic intellectual property transactions. Our lawyers know the law and dynamics surrounding these complex agreements, and we understand the science and technology behind our clients’ products and services. In addition, we work closely with patent professionals and scientific advisors, many of whom hold Ph.Ds. and other advanced degrees. We represent clients in a range of industries, including information technology, clean technology, entertainment, life sciences, telecom, wireless, electronics, healthcare and publishing.

Intellectual Property Services

Our multidisciplinary team includes transactional lawyers, litigators, trademark lawyers, patent prosecutors and patent professionals. We counsel clients with respect to obtaining and protecting patents, trademarks and other intellectual property assets. Our lawyers have a reputation for high-quality litigation and trial work to defend those assets, and our lawyers have extensive experience litigating complex patent, copyright, trademark and trade secret cases. A significant part of our practice also involves counselling clients and negotiating transactions with respect to licensing and distribution of their products, technology and related intellectual property.

Intellectual Property Joint Ventures

We represent clients in the design and documentation of domestic and global cross-border and domestic joint ventures, strategic alliances, collaborations, and research and development and other teaming arrangements.

Intellectual Property Audit

In the 21st Century many of the world’s prominent businesses are increasingly reliant on their intellectual property as economic drivers.  Economic growth of many nations is increasingly reliant on intellectual property. A typical modern company’s value is 80% intangible property and 20% “brick and mortar” assets. Paradoxically, in a world where companies’ assets often exceed 80% intangible , financial markets have not kept pace, leading to immature intellectual property finance markets in comparison to brick and mortar finance markets.

When businesses with significant intellectual property are unable to raise capital by utilising intellectual property, they are less capable of investing in further innovation and intellectual property, which has a chilling effect on their research and development pipelines.  Wood & Lee is the only international law firm to perform no-cost intellectual property audits, to allow your company to understand and unlock the value of your company’s intellectual property.

Intellectual Property Commercialisation

We counsel clients on protecting, developing and monetising their IP assets; in- and out-licensing of technology and content; penetrating foreign markets through value-added resale (VAR), original equipment manufacturing (OEM), distribution; licensing; clinical development and other commercial arrangements.

Intellectual Property Users

We represent clients in the acquisition or in-licensing of technology, data or tools, with a focus on healthcare providers, financial services companies, natural resources companies, publishers, and wireless and Internet content providers.

Patents

Wood & Lee’s lawyers provide strategic guidance to clients striving to build, maintain and protect patent portfolios, trade secrets and other proprietary information. In addition, we work closely with patent professionals and scientific advisors, many of whom hold Ph.Ds. and other advanced degrees in key areas of technology, including biology, chemistry, engineering and computer programming. Our lawyers have the subject-matter knowledge to service clients in any area of advanced technology. We offer all patent-related services, including patent searching, patent drafting and filing, patent prosecution (including interference practice), patent term extensions and regulatory exclusivity, due diligence reviews and opinions with regard to patentability, validity and infringement.

Patent -related Services:

• Patent searching
• Patent drafting
• Patent and trademark prosecution
• Patent term extensions
• Patentability, patent and trademark validity and infringement opinion
• Patent litigation

Wood & Lee lawyers have a track record of success at all stages in patent disputes, from early stage disputes regarding venue, to claim construction hearings, summary judgment proceedings, trials and appeals, as well as in mediations, arbitrations, and settlement negotiations. Our capabilities extend across the entire range of patent disputes, from successfully handling bet-the-company patent fights to providing superior and efficient defence against claims brought by non-practicing and patent assertion entities.

We work with clients not only to win in court, but to understand their businesses and technologies, and we strive to find the most creative, efficient strategies to help our clients achieve their goals. While we are prepared to take every case to trial, we also understand that the substantial majority of patent lawsuits do not reach trial, and we work with clients to obtain a successful result as economically and as soon as possible, in and out of the courtroom.

Our combination of our experienced trial lawyers and patent counsel produces consistently powerful and efficient litigation. Our litigation prowess also translates into more effective representation in transactional matters. Our lawyers have experience with:

• negotiating and writing licenses
• technology transfer agreements
• providing patent counselling
• due diligence studies for companies acquiring IP assets.

Our lawyers routinely assess patents and advise clients on licensing issues. Clients look to our lawyers for:

• assistance on the design
• documentation and operation of licensing transactions
• technology transfers, which are crucial to the success of many life sciences and technology companies.

We represent clients in key strategic alliances and corporate partnerships, including:

• joint ventures
• research and development agreements
• marketing agreements
• distribution agreements
• other commercial agreements.

Patent Licensing and Acquisitions

Wood & Lee lawyers have handled complex, high-stakes patent licensing. Experienced in the field of patent licensing law, our lawyers are also sophisticated deal-makers who can help clients navigate the many nuances and subtleties of patent licenses to achieve their business objectives. Our lawyers advise clients on licensing deals that settle or avoid litigation.

Technology Transactions and Technology Transfers

Wood & Lee lawyers have extensive experience representing companies around the world from a broad range of industries in transactions involving the development, transfer, or other commercial exploitation of intellectual property assets and technology-based products and services. Transactions of high strategic value to our clients are what we do best and where we add the most value.  Our lawyers have extensive experience with:

• Information technology equipment and services procurement
• Intellectual property asset transfers and monetisation
• Internet transactions
• Joint ventures and collaborations
• Outsourcing
• Patent licensing and acquisitions
• Renewable energy equipment sales and technology transfers
• Semiconductor fabrication equipment sales and foundry deals
• Software licensing

Copyrights

Our copyright litigation expertise encompasses matters involving both software and traditional media, with related experience counselling clients regarding clean room implementation and the business risks associated with the development and marketing of dual use technologies. Our lawyers have coordinated and implemented anti-piracy and seizure efforts around the world for products ranging from blue jeans to computer software, from handbags to other luxury goods. We manage, monitor and enforce copyright portfolios and institute and defend opposition and cancellation actions.

From the identification of infringers, to the initiation of private enforcement procedures, to representation in litigation, through trial and beyond, our lawyers have built a reputation for zealous advocacy of our clients’ copyrighted assets.  In additional to courtroom advocacy, we handle:

• copyright clearance
• copyright registration
• copyright licensing and distribution
• copyright securitisation
• copyright assignment

Our lawyers frequently prepare releases and other legal documents that clients use in their day-to-day business operations to ensure the integrity of their copyrights and prevent exposure to copyright infringement claims. Our lawyers have experience reviewing our clients’ business operations to identify and protect copyrightable works early, enabling our clients to enforce their rights more effectively and efficiently.  We also counsel clients on realistic procedures they can employ to avoid infringement claims and minimise potential liability.  We counsel clients on Internet-related legal and regulatory issues, electronic privacy and targeted advertising on the Internet.

Brand and Trademark Management

Wood & Lee lawyers have extensive experience in strategic planning and enforcement of trademarks and related intellectual property assets, regularly representing clients in all phases of brand management, including:

• trademark, domain name and copyright acquisition
• trademark clearance
• trademark monitoring
• trademark protection
• administrative proceedings for trademarks

We maintain a trademark portfolio for companies in a variety of industries including fashion, film, sports, automotive, aerospace, insurance, healthcare and consumer products. In addition, we frequently prepare co-branding, co-existence and merchandising licenses. Our lawyers also specialise in the protection of geographically distinctive products, through Geographical Indications (GIs), certification marks and other means.

Trademark and Unfair Competition

Our lawyers have extensive experience in handling all aspects of trademark protection before the courts, the trademark offices and the trademark trial and appeal boards. Through that experience, we are able to provide our clients with practical insights on registering and maintaining their domestic and international portfolios and on using licensing and distribution agreements to achieve market penetration without compromising the integrity of their intellectual property rights.

We help clients in all aspects of procuring, protecting and enforcing trademarks, including:

• litigation of trademark matters
• trademark searches
• trademark investigations
• trademark clearance
• preparation of opinion letters regarding trademarks
• filing and prosecuting trademark applications
• prosecution, defence and settlement of trademark proceedings
• policing and monitoring the use of trademarks
• providing general trademark counselling

We manage the trademark portfolios for clients with significant intellectual property assets. Our lawyers have successfully litigated numerous cases involving allegations of trademark infringement and related unfair competition claims, as well as claims of false or misleading advertising. We manage our global network of trademark counsel to oppose or cancel marks, as well as to institute or defend litigation when necessary.

Our trademark team obtains and maintains trademarks registrations for many of our clients. We are responsible for the protection of trademarks, internationally. Members of our team are also responsible for combating domestic and international infringement of our clients’ trademarks.

Media/Entertainment Representation

Wood & Lee lawyers represent media and entertainment entities regarding intellectual property issues, trademark and copyright infringement, right of publicity, and breach of contract actions. Our lawyers have acted at both the trial and appellate levels involving entertainment and media intellectual property issues, and also have experience managing the copyright and trademark portfolios of motion picture studios and record companies. Our lawyers also have extensive experience in matters involving free expression and its counterpart, unlawful speech.

Trade Secrets

Our lawyers have experience representing a host of life sciences, electronics and software clients in issues ranging from the allegation of illicit payments in exchange for confidential information to the misappropriation of confidential financial information and the unauthorised use of technologies.

Our lawyers advise clients on methods of protecting valuable trade secret assets. Our lawyers have extensive experience with:

• employment contracts that cover confidentiality, non-competition and non-solicitation
• consulting arrangements that cover confidentiality, non-competition and non-solicitation
• licensing and assignment agreements for trade secret information
• litigation for high-stakes trade secret disputes
• injunctive and other equitable relief to immediately protect proprietary business information

Outsourcing

We structure and negotiate manufacturing and business process outsourcing arrangements.

Software, Semiconductors and the Internet

Wood & Lee advises companies globally in a wide range of information technology industries – from enterprise software applications to semiconductor design and manufacturing, from Internet commerce and games to, virtual reality, augmented reality, machine learning, wireless communications, and more. Our lawyers have extensive experience working with executives, entrepreneurs and investors in high-tech companies. Our lawyers regularly handle:

• sophisticated mergers and acquisitions
• strategic joint ventures
• licensing transactions
• high-stakes litigation
• equity and debt corporate financings
• complex international tax structures

Our lawyers handle mergers, licensing transactions and litigation settlements. Several of our lawyers have professional experience working in high-tech businesses and regularly advise clients on issues that lie at the intersection of business, law and technology, such as the use of open source software and patent portfolio strategies. We work closely with advisors, many of whom hold Ph.Ds. and other advanced degrees in key areas of computer science, computer engineering. Our extensive knowledge of business, legal and technical matters enables us to understand our clients’ business models and objectives, recognise industry practices that are either standard or unconventional, and advise our clients on dynamics and trends that can make the difference between success and failure in a transaction or a dispute.

Free and Open Source Software

Free and Open Source Software (“FOSS”) has become ubiquitous in software development and corporate computing environments. Compliance with the myriad of differing FOSS licenses is challenging even for the most sophisticated enterprises. FOSS usage and license compliance is routinely scrutinised in financing and acquisition transactions, and enforcement actions by FOSS authors have been on the rise in recent years.  Wood & Lee lawyers have extensive experience advising clients about the issues related to use of FOSS and to releasing code under FOSS licenses.

Our Capabilities

• Applying FOSS licenses to technical scenarios and advising on resulting copyleft and other licensing risks and compliance concerns.
• Conducting and advising on diligence reviews of FOSS usage.
• Negotiating representations and warranties related to FOSS in mergers and acquisitions, financing and commercial transactions.
• Assisting in the development of FOSS usage policies.
• Advising clients regarding “dual-licensing” and other FOSS business models.
• Assisting in the selection of an appropriate FOSS license.
• Providing FOSS training to in-house legal and engineering groups.

Emerging Technologies

Wood & Lee’s innovation lawyers advise at the cutting edge of technology and ideas.  Our lawyers advise on the following emerging technologies:

AI algorithms, AI chipsets, FOBO and TPMS, First Amendment and Due Process for the electronic era, GDPR, Internet of Things, Li-Fi, Maglev trains, PSD2, Retail APIs, Robotics, adaptive learning, agricultural technologies, ambient interfaces, amorphous metals, androids and personal robots, artificial Intelligence, artificial gravity, assisted driving, asteroid mining, audio search engines, augmented reality, autonomous ships, autonomous underwater vehicles, autonomous vehicle testing, big data, blockchain, carbon nanotube field-effect transistors, charging stations, cloaking devices, cognitive computing, collaborative robotics, commercial space technology, computational photography, computer-generated imagery, concentrated solar power, conductive polymers, construction 3D printing, crowdlearning, cryogenic treatment, cryptocurrencies, cultivated food and beverage, decentralised internet technologies, deep learning, deep linking, digital assistants, digital film and music technology, digital scent technology, distributed ledger technology, drone delivery, drone swarms, electric double-layer capacitors, electric vehicles, electroencephalography, emerging magnetic data storage technologies, encryption management, energy harvesting, esports, ethical manufacturing, fintech, flexible displays, flexible wings, flying cars, flying discs, flying taxis, fourth-generation optical discs, fullerene, graphene, green tech, greenscreen technology, grid energy storage, hidden bias in recognition, high-temperature superconductivity and superfluidity, holography, homegrown AI, hydraulic technology, hypereutectic alloys, internet security, lab-on-a-chip, laser and photon propulsion, lasers, machine reading comprehension, machine translation, machine vision, macro grids, magnetic levitation, mesh networks, metamaterials, micro grids, microdrones, microfarms, miniaturised satellites, molecular electronics, molecular robotics, nanoradio, nanorobotics, nanotechnology, nanowire batteries, narrowcasting, natural language understanding, neural networks, nootropics, open banking, open source, open source software, optical computing, parallel importations, peer-to-peer lending, personal rapid transit, personalised medicine, physical internet, powered exoskeletons, privacy and data, programmable matter, proprietary AI, prosthesis, quadcopters, quantum computing, quantum cryptography, quantum dots, radio-frequency identification, real-time fact checking, reusable launch system and reusable rocket technology, search and rescue drones, security, self-driving and self-piloting technology, sharing economy, smart appliances, smart bill pay, smart cameras, smart cars, smart cities, smart dust, smart fabrics, smart farms, smart glass, smart glasses, smart grids, smart grids, smart logistics, smart thread, smarthomes, smartwatches, solar highways, solar roofs, solar tiles, spaceplane, stealth technology, superalloys, supersonic and hypersonic transport, swarm robotics, synthetic diamonds, the AI Cloud, the right to be forgotten, three-dimensional integrated circuits, translucent concrete, transportable health data, vactrain and hyperloop technology, vehicle-to-vehicle (v2v) communications, vehicular communication systems and supercavitation, vertical farming, video game technology, virtual reality, visual search engines, wearable technology, zero-energy buildings, 3D displays, 3D printing, 4D printing, 5G cellular & 6G cellular communications.