Intellectual Property and Technology
The Intellectual Property and Technology Group at Skadden, Arps, Slate, Meagher & Flom LLP and affiliates (“Skadden, Arps” or “Skadden”) offers clients a full range of legal services relating to the acquisition, enforcement and commercialization of intellectual property and technology assets. These services include counseling and handling transactions on engagements involving patents, copyrights, trademarks, outsourcing, privacy and data security. Attorneys in our group also litigate these issues in federal and state courts. Skadden was named to The National Law Journal’s 2013 “Intellectual Property Hot List” and ranked among the leading firms in Intellectual Property by Chambers USA 2015 and U.S. News — Best Lawyers “Best Law Firms” 2013. In 2013, the Financial Times ranked Skadden first in the country in its “US Innovative Lawyers” report, which recognized our representation of MIPS Technology in a unique patent carve-out plus mergers and acquisitions deal to monetize its intellectual property portfolio.
Transactions and Counseling
Our attorneys counsel on virtually every type of intellectual property transaction, including negotiating and drafting numerous licenses and alliance agreements and handling a wide variety of matters that relate to the creation, use, licensing and transfer of information technologies. This includes drafting of license, option, nondisclosure, collaboration, manufacturing and distribution agreements. We also provide intellectual property support in conjunction with mergers and acquisitions, initial public offerings and financings. Beyond an understanding of intellectual property matters and the science and technology underlying them, our attorneys understand the business models used by our clients to maximize the value of these technologies, and we seek to create or add value to their intellectual property and technology portfolios.
The group’s lawyers provide copyright advice to a wide range of clients, particularly in the online, publishing, entertainment and communications industries, such as mobile app developers, Internet technology providers, social media companies, software developers, broadcast and cable television networks, television and movie producers, recording artists and authors. Our lawyers also have extensive experience with representing content creators, including authors and artists.
We assist clients in obtaining, protecting and enforcing trademarks in the United States and worldwide, including: conducting and reviewing searches and investigations for trademark clearance; preparing opinion letters; filing and prosecuting trademark applications; handling the prosecution and defense of trademark administrative proceedings; monitoring and policing the use of trademarks by third parties; and providing general trademark and domain name counseling. As part of this practice, we manage the domestic and international trademark portfolios and related intellectual property matters for a wide range of clients. Our attorneys also counsel on Internet domain name and social media address acquisition, use and defense.
Patents and Trade Secret Strategy
Skadden’s intellectual property attorneys perform sophisticated reviews of patent and trade secret assets on transactional matters. Our work includes high-level analyzing target and competitor patents and unpatented technology; performing “deep-dives” to review the background, scope, strengths and weaknesses of target and competitor patent portfolios; analyzing patent and proprietary-technology protection strategies; counseling clients regarding intellectual property monetization portfolio practices; and structuring various agreements with respect to the evaluated technology. Many of our patent attorneys are registered to practice before the U.S. Patent and Trademark Office and hold technical or scientific degrees, in areas such as electrical engineering, computer science, biology, chemistry and physics.
Our attorneys evaluate patent transactions based on proprietary statistical research and historical patent disputes. We complement traditional legal advice with a range of analytics capabilities, and we also provide data and insights for specific strategy development and market entry, such as “patent troll” investigations and industry/sector-specific exposure analyses.
We have considerable knowledge in pharmaceutical, biotechnology and medical device licensing and collaborations, as well as alternative transactions such as drug royalty purchases. We advise clients on all intellectual property and related aspects of licensing, collaboration, joint venture and financing agreements and in transactions involving the research, development, manufacture and commercialization of pharmaceutical and biotechnology products and medical devices. These agreements and transactions often involve critical strategic decisions and require sophisticated structuring, lengthy negotiations and complex documentation. Our practice includes attorneys who hold advanced degrees in relevant life sciences disciplines.
We handle the entire spectrum of intellectual property and technology licensing arrangements, ranging from traditional license agreements to complex ventures for joint development of products, applications and systems. We regularly negotiate and advise clients with respect to food and beverage and fashion ventures, software licenses, equipment leases, software development and distribution agreements, and network services and data acquisition agreements. Our clients in this area include technology vendors and end-users in the publishing, financial services, transportation, manufacturing, entertainment and telecommunications industries, and major food and beverage manufacturers and fashion and apparel companies.
We support clients through all stages of an outsourcing project — from preparing the initial RFP and facilitating vendor selection to negotiating all aspects of the definitive agreement and schedules. Our attorneys have handled a wide variety of outsourcing transactions, ranging from the outsourcing of a specific business process to the enterprise-wide outsourcing of all information technology. Our experience also stretches across a broad range of industries, representing both vendors and customers. The cornerstone of our practice is that we can move easily among the legal, business and technology issues in any outsourcing transaction. We are equally comfortable discussing legal issues with the in-house lawyers, pricing and strategic issues with the business stakeholders and service descriptions with the technology specialists. Skadden also is positioned to handle “offshore” outsourcing transactions including projects where the outsourcer is in a foreign country or where the customer will be receiving services in locations around the world.
Privacy and Cybersecurity
Our attorneys help companies navigate and comply with the evolving landscape of mining customer data to maximize the benefits of data usage while avoiding privacy law issues. We are well-versed in privacy laws and regulations worldwide and understand the business models and technologies underlying data usage. However, privacy laws are not a company’s only concern. The dramatic increase in the number of actual and attempted data security breaches, coupled with the high cost of responding to these attacks, has made data security a top priority for general counsel. We provide clients with the key resources they need to prepare for, and respond to, any type of data security incident.
Manufacture, Supply and Distribution
Intellectual Property and Technology Group attorneys regularly represent companies around the world in manufacture, supply and distribution contracts. Skadden has represented companies in the fashion, food and beverage, energy, pharmaceutical, chemical and other industries with key manufacture, supply, distribution and marketing agreements. As a result, we have significant experience with these critical types of commercial arrangements and the legal and strategic issues that they raise.
Litigation: Trial and Appellate Practice; Dispute Resolution
Attorneys in our Intellectual Property and Technology Group represent clients in their most important intellectual property disputes, whether in federal or state court, before the International Trade Commission, or in mediation or global arbitration.
Skadden litigators protect clients’ key products and brands both by defending against infringement allegations and enforcing intellectual property rights, including in obtaining multimillion-dollar jury verdicts against competitors. Our trial experience allows us to anticipate and strategically manage every phase of a case, often giving us an edge in terms of resolving our clients’ matters without entering the courtroom. When cases do advance to trial, our clients benefit from the experience of our nationally recognized litigators, who have decades of success in federal and state courts and the ITC.
Companies call on us to resolve disputes relating to advertising, copyright, licensing, patents and trademarks across a broad spectrum of industries, including aerospace, biotechnology, chemicals, communications, computer technology, consumer products, electronics, financial services, media and entertainment, medical devices, pharmaceuticals, semiconductors and sports, among other areas. We also work closely with Skadden’s transactional practices to provide strategic intellectual property advice in connection with corporate acquisitions and other transactions and to provide prelitigation advice in matters relating to infringement issues, trade secret misappropriation and business torts.