Intellectual Property
Gould & Ratner’s Intellectual Property attorneys are skilled at obtaining patents, trademarks and copyrights. We advise clients in all aspects of intellectual property, including counseling, prosecution and litigation of patents, trademarks, copyrights, trade secrets, trade dress, business methods and technology transactions.
We represent clients in a broad array of industries including:
- manufacturing
- software
- technology
- telecommunications
- computer manufacturing
- retail and e-commerce
- consumer goods
We guide our clients through the process of leveraging their assets through transactions that include licensing programs, transfer of technology and protection of trade secrets. Drawing on their experience in specific technology practice areas, our attorneys work with our clients to prepare appropriate agreements, including:
- effective dealer and distributor agreements
- technology transfer license agreements
- software development agreements
- software license and maintenance agreements
- cloud computing and other software as a service (SaaS) agreements
- agreements relating to the development, distribution and use of open source software
- employment agreements
- policy manuals preventing the unauthorized disclosure of proprietary information
IP Litigation
Our Intellectual Property Practice also includes a full-service litigation component, with experienced IP practitioners and trial lawyers teaming to handle myriad litigation matters involving patents, trademarks, trade dress, copyrights, trade secrets, antitrust, unfair competition, violation of non-compete agreements, and dealer and distributor termination.
Representative Matters
- Represented defendant in patent infringement suit involving quad small form factor pluggable (QSFP+) transceiver and adapters.
- Represented an inventor of more than 150 medical device patents structure and negotiated several complex licensing transactions with major medical device manufacturers.
- Represented a company with patents on several cancer fighting therapies receive equity infusions from a public company.
- Represented a banking software developer in several license agreements with the banks for customer relationship management software.
- Represented a developer of communications software in license, maintenance and escrow arrangements with several customers.
- Representation of baked goods manufacturer specializing in custom formulations defending against conversion claims and prosecuting breach of contract and violations of trade secret and intellectual property laws.
- Representation of leading developer of custom-engineered and application specific technology products and solutions defending patent infringement claims quad small form factor pluggable (QSFP+) transceivers and adapters.
- Representation of financial institutions investigating potential infringement claims and negotiating and drafting services contracts relating to intellectual property and infringement indemnifications.
Publications
- Copyright Small Claims Court Established as Part of Spending and COVID-19 Relief Package , December 28, 2020
- Trademark Guidance Supports U.S. Supreme Court’s Booking.com Ruling For Domain Name Trademark Registration , October 29, 2020
- U.S. Supreme Court’s Booking.com Ruling Supports Domain Name Trademark Registration , July 7, 2020
- Top 10 Reasons Arbitration Will Benefit Parties More Than Litigating at the PTAB , IP Watchdog , August 14, 2019
- Coming Soon: Key 2019 Canadian Trademark Change Drops Proof of Use Requirement , May 24, 2019
- Can Arbitration Fix the Patent System? , Landslide , May 2019
- Use of Arbitration In Place of Inter Partes Review Proceedings , Law Journal Newsletters , January 2019
- Patent Neutral: Expanding Use of ADR for Settlement of Patent Disputes at the PTAB , December 2017
- The Cambridge Handbook of Technical Standardization Law - Competition, Antitrust, and Patents , December 2017
- Law360.com Features David Newman Article on How Transparency Can Help SSOs Under Attack by U.S. DOJ , Law360 , November 19, 2017
- High Transparency May Help SSOs Under Attack by US DOJ , November 16, 2017
- High Court Rulings Hinder Patent Enforcement , Law360.com , May 29, 2017
- Launching a Licensing Revolution , Intellectual Property Magazine , May 2017
- Supreme Court Ruling in Samsung v. Apple Decision Opens Door for Apportionment of Patent Damages , Inside Counsel , December 8, 2016
- The Federal Gates Are Open: Defense of Trade Secrets Act 2016 , GR Client Alert , April 2016
- Negotiating the Software License: Eight Tips for the Licensee , The Practical Lawyer , May 1999
News
- Eight Gould & Ratner Lawyers Earn Illinois Super Lawyers, Rising Stars Designation for 2021, February 1, 2021
- Rob Chidester Named Partner at Gould & Ratner, December 1, 2020
- Gould & Ratner Represents Client TanvasTouch in Innovative Technology Product Release, June 10, 2020
- Gould & Ratner Represents Client TanvasTouch in Innovative Technology Product Release, June 10, 2019
- Introducing ROSE Arbitration for Settling Patent Disputes, May 31, 2018
- David Newman Authors Book, Patent Neutral: Expanding Use of ADR for Settlement of Patent Disputes at the PTAB, January 10, 2018
- David Newman Discusses TC Heartland Case in IP Watchdog Roundtable, IP Watchdog, October 16, 2017
- David Newman was Recognized as an ADR Champion by the National Law Journal, The National Law Journal, June 2017
- Collecting Patent Transaction Data, Zillow-Style, InsideCounsel, April 27, 2017
- Merger Cops May Have Untapped Tools for Stopping Deals, The Deal, March 21, 2017
- Bill to End Deference to Regulatory Interpretations Could Impact USPTO, Law360.com, January 19, 2017
- Does Europe Issue Better Patents Than the United States?, Inside Counsel, September 22, 2016
Events
- David Newman Spoke at the ABA's 2021 Virtual Corporate Counsel CLE Seminar, February 17, 2021
- David Newman Was A Panelist on A Webinar Hosted by Resolute Systems, November 17, 2020
- David Newman to Present at ACR-GNY Annual Conference, June 14, 2019
- David Newman Presented at AIPLA Spring Meeting, May 14, 2019
- David Newman Spoke at the 2018 Supreme Court IP Review: Patent Edition Conference, September 20, 2018
- WEBINAR: Proper Bounds of Transparency for IP Transactions: Exploring the Level of Disclosure Required To Meet FRAND Compliance and European Commission Requirements, December 2017
- WIPO In-House Counsel Seminar: Alternative Dispute Resolution for International IP and Technology Disputes: When, Why, and How, September 2017
