Our legal knowledge, engineering and science backgrounds, business acumen, and fluency in various industries and technologies enables us to provide a full range of intellectual property services to clients located around the globe. Our attorneys provide patent, trademark, copyright, and related licensing, outsourcing and technology agreement services to large multinational corporations, middle market participants, emerging companies, higher education institutions, nonprofit organizations, individuals, and entrepreneurs.
We strategically work with our global affiliates to procure and protect patents in countries around the world. Our attorneys are experienced in evaluating technologies for patentability and drafting and prosecuting patent applications. The Firm represents clients before the U.S. Patent and Trademark Office in obtaining patents and in post-grant review of patents, including appeals to the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. Our experience in patent procurement spans a broad range of industries and technologies, including:
Representative matters include:
- Procured domestic and foreign patents for inventions directed to energy production systems with reduced carbon output.
- Obtained patent protection in the U.S. and abroad for camera-related technology developed by an inventor who is an inductee into the National Inventors Hall of Fame.
- Conducted due diligence related to a client’s potential investment in a company facing a patent infringement claim. This included assessing the scope of the subject patent directed to the configuration of a computer network running a gaming program and evaluating the infringement claim.
- Prepared and prosecuted patent applications directed to commercial, high-speed document processing machines.
- Counseled clients against whom assertions of infringement were made based on the use of computer-implemented methods as part of clients’ website.
- Prepared and prosecuted patent applications for computer implemented inventions developed for use by the U.S. military.
- Obtained patent protection for clients in the telecommunications and semiconductor industries directed to computer chip manufacturing processes, such as photolithography and chemical-mechanical planarization and polishing.
Schnader’s Intellectual Property Practice Group registers, maintains and protects trademarks for domestic and foreign clients. Our docket of over 2,600 U.S. and foreign applications and registrations includes marks used in a broad range of industries, such as pharmaceutical, automotive, clothing, food and consumer products. We also oversee the trademark portfolios of higher education entities, comprising marks associated with academic and athletic programs.
We advise our clients on selection and protection of brand names, slogans and source identifiers to distinguish their goods and services from those of competitors. We evaluate the benefits of securing trademark registrations throughout the world and handle the registration process. We represent clients in contested proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.
Representative matters include:
- Develop and protect university trademark portfolios, including coordinating efforts of athletic personnel and in-house counsel, to maximize licensing fees.
- Registered trademarks in China that were previously blocked by a trademark “pirate.”
- Represented a large research and clinical care organization in Pennsylvania with the protection and defense of their trademarks.
- Negotiated the settlement of a claim that a U.K. client’s use in the U.S. of its internationally protected trademark infringed the rights of a U.S. trademark owner.
- Protected marks on behalf of a university against unauthorized use by various business consulting services companies.
- Counseled client on the selection and adoption of new names and logos for its various gaming activities and registered the selected marks in the U.S. Trademark Office.
- Protected the house mark for a pharmaceutical client and prevented registration of similar marks for competing pharmaceuticals.
- Guarded a well-known food franchisor’s mark against infringing use from one of its competitors.
Schnader assists clients in protecting original works of authorship by obtaining registration in the U.S. Copyright Office. We also counsel clients on copyright fair-use issues. Our firm provides copyright services related to websites, audiovisual works, computer software, paintings, jewelry, furniture, music and literature. We also advise clients on issues involving ownership and adaptation of works that may be subject to copyright. We enforce clients’ rights and secure compliance with settlements arising from copyright proceedings.
Representative matters include:
- Represented clients in the publishing industry in licensing copyrights for translated works and the original works in English.
- Prepared agreements to license original compositions and recorded performances by composer/musician to publisher.
- Counseled a copyright owner on terms of agreement transferring rights to produce movies and television series based on a book series.
- Registered copyrights in clients’ computer software and website content.
- Negotiated a comprehensive license agreement for technology, know-how, and copyrights in related documents.
- Counseled a business on the merits of a publisher’s assertion that the business violated a license agreement by internally distributing copies of newsletters.
- Advised a client on copyright protection of product manuals and parts lists in the automotive industry.
- Counseled a jeweler on the ownership of copyrights in jewelry designs created by a freelance designer.
Technology Transactions and Outsourcing
We negotiate and draft intellectual property ownership agreements, both as stand-alone contracts and as adjunct documents to employment or independent contractor agreements, and licensing, leasing, and acquisition transaction agreements. We facilitate the ownership transfer of intellectual property associated with acquisitions and within business entities, by assigning and recording rights in the U.S. and foreign countries. We represent both banks and borrowers where the proceeds of the loan will be used for the purpose of acquiring technology or where intellectual property is provided as security for the loan. We also assist clients in protecting and maintaining intellectual property during bankruptcy proceeding.
Representative matters include:
- Represented a major equipment leasing firm in the negotiation and preparation of licensing agreements and service level agreements to establish an Internet portal automating decision-making on credit requests by the firm’s customers.
- Reviewed and drafted advertising terms and conditions for product placement (media buys) on retail websites.
- Represented major financial institutions in the negotiation of data licenses, check-clearing, and electronic-trading agreements.
- Represented a large credit card processor in outsourcing the printing and mailing of invoices and statements.
- Conducted IP audits/assessments in connection with technology and licensing transfers for mergers and acquisitions.
- Drafted UDRPs, DMCA takedown notices and demand letters in order to maintain the commercial impression and integrity of registered trademarks and copyrights on the Internet.
- Represented a large multinational corporation in the global outsourcing of integrated facilities management.
- Acted as principal outside counsel on technology matters for one of the country’s leading online retailers of goods and services.
- Reviewed mobile phone provider developer terms and conditions to advise client on concerns and business issues related to the development of smartphone mobile applications.
- Represented a large hospital group in the outsourcing if its IT department, including licensing third-party technology used in the service and negotiation of hosting agreements.
News & Publications
- It’s a New Game: Pennsylvania Statute Adopted on College Athlete Compensation for Name, Image and Likeness
- Summer School for Intellectual Property: Universities Must Prepare Student-Athlete Endorsement Policies in Response to New NCAA Rules
- What Does the Future Hold for College Athletics after the Supreme Court Decision in NCAA v. Alston?
- Katrina Harrison Earns Certified Information Privacy Professional Credential
- Drew Kastner Appointed to Advisory Board for Copyright Society of the USA
- United States Patent and Trademark Office Fee Adjustments Effective January 2, 2021
- California Votes To Strengthen Consumer Privacy Laws
- Schnader a Tier One Firm in 2021 “Best Law Firms” Rankings
- Benchmark Litigation Recommends Schnader
- Practical Implications of Supreme Court’s Romag v. Fossil Decision: Avoiding Forfeiture of Hard-Earned Profits in Trademark Infringement Lawsuits
- Decision by EU Court of Justice Turns the Privacy World Upside Down
- Intellectual Property and College Athletics – NCAA Clarifies Stance on Student-Athlete Compensation
- The Copyright Office Response to the COVID-19 Outbreak
- Limited Extension of USPTO Trademark Deadlines under the CARES Act
- Intellectual Property and College Athletes – New Directions by NCAA about Compensation
- Schnader a Tier One Firm in 2020 “Best Law Firms” Rankings
- Copyright Lawsuit Questions Answered: Panel Discussion on the Impact of the Fourth Estate Case
- Assessing the Impact of Recent Supreme Court Decisions on Intellectual Property and Creditors’ Rights & Business Restructuring Issues
- Schnader a Tier One Firm in 2019 “Best Law Firms” Rankings
- Stephenie Yeung Published “Cybersecurity for Midsize and Smaller Law Firms: 10 Tips to Take Action Now”
- David Smith Named Board President of AJC Philadelphia/Southern New Jersey
- Kastner, Yeung, Chou, and Lewis Publish “Crucial Tips for Using IP Watching and Enforcement to Protect Your Business”
- Lisa Rodriguez Named to Super Lawyers 2018
- Schnader a Tier One Firm in 2018 “Best Law Firms” Rankings
- Stephenie Wingyuen Yeung Named to Schnader Partnership
- Impact of Brexit on Intellectual Property
- Dennis Suplee Honored with 2016 Lifetime Achievement Award
- Schnader Recognized as Tier One Law Firm in 2016 “Best Law Firms” Rankings
- In Third Circuit, All Confusion Is Relevant in Trademark Cases
- Supreme Court Announces Standard of Review for Factual Issues Underlying Patent Claim Construction: Implications Beyond Patent Law
- Stephenie Yeung Earns Certified Information Privacy Professional Credential
- Allison Fihma Drachman Named to Schnader Partnership
- Schnader Recognized as Tier One Law Firm in 2015 “Best Law Firms” Rankings
- Drew Kastner Joins Schnader’s NY Office
- Thirty-Two Schnader Attorneys Selected for The Best Lawyers in America 2015
- Supreme Court Invalidates Aereo’s Streaming Service, Finding Existing Copyright Law Applies to the New Technology of Internet Retransmission of Television Signals
- Supreme Court Provides Guidance on the Subject Matter Eligibility of Computer-Implemented Inventions
- Supreme Court Adopts “Reasonable Certainty” Standard for Evaluating Indefiniteness Challenges to Patent Claims
- Aftermarket Competitors Given a Boost by the Supreme Court
- New Generic Top-Level Domains Will Create New Trademark Issues: The Trademark Clearinghouse Can Help
- Schnader Recognized as a Tier One Law Firm in the 2014 “Best Law Firms” Rankings
- “3D printing: Protecting intellectual property rights”
- Schnader and Yang & Co. Formalize Representation Arrangement for Indonesia Related Legal Matters
- “Supplier’s Agreement to Manufacture Product Invalidates Patent”
- “Trademark Laws: Pennsylvania”
- Thirty-One Schnader Attorneys Selected for The Best Lawyers in America 2014
- “Take 5: Five Things You Should Know About Intellectual Property Law”
- “Barristers Meeting Needs of Diverse Attorneys”
- NAACP Philadelphia Chapter Selects Rachel Branson as one of the 104 Influential Black Women in Philadelphia for 2013
- Consider Taking These Actions Before March 16, 2013, The Effective Date of New U.S. Patent Laws
- “Affinity Bar Associations: Why Should Young Lawyers Join?”
- Schnader Hosts Barristers’ Association of Philadelphia General Body Meeting
- Did Hurricane Sandy Just Give You an Opportunity to Renegotiate Your Outsourcing Agreements?
- Schnader Recognized as a Tier One Law Firm in the 2013 “Best Law Firms” Rankings
- Thirty-Three Schnader Attorneys Selected for The Best Lawyers in America 2013
- Schnader Adds Ten New Attorneys
- Schnader Urges U.S. Court of Appeals for the Second Circuit to Uphold Ruling for Their Client, Patrick Cariou
- New Jersey Adopts Uniform Trade Secrets Act: Implications For Your Intellectual Property Portfolio
- Preventing the Unauthorized Use of Trademarks with a .xxx Generic Top Level Domain – Action Required by October 28, 2011
- Sixty-Eight Schnader Attorneys Rated AV® Preeminent™ by Martindale-Hubbell®
- Patent Prosecution Strategies Under the Leahy-Smith America Invents Act
- Thirty Schnader Attorneys Recognized as “The Best Lawyers in America” for 2012
- U.S. Supreme Court Affirms the Rule That Patent Infringers Must Prove Invalidity Defense by Clear and Convincing Evidence
- Ownership of Ideas in a Virtual World
- Thirty-Two Schnader Attorneys Recognized as “Best Lawyers in America” for 2011
- Ten Years From State Street to Bilski – And No End in Sight
- Super Lawyers Recognizes Many Schnader Attorneys in 2010
- Schnader Welcomes Two New Partners to the Firm’s San Francisco Office
- Twenty-Eight from Schnader in Best Lawyers in America 2009
- Schnader Attorneys Contribute to The Barristers’ Association of Philadelphia Martin Luther King, Jr. Annual Breakfast
- Twenty from Schnader in Best Lawyers in America 2007
- Schnader Opens Delaware Office
- Five Schnader Attorneys Honored as Pennsylvania Rising Stars
- “Fifth Circuit Affirms Judgment in Copyright Case: Rappers’ Songs Don’t Infringe”
- Schnader Ranks Highly Among Nationwide Trademark Firms
- WEBINAR: How Universities Can Prepare for Student-Athlete NIL Issues
- Class Action Litigation in 2020: What You Need to Know
- The Practical Impact of the SCOTUS Decision in the Fourth Estate Case
- Schnader Sponsors and Hosts the CPR Regional Meeting in Philadelphia on April 30
- Elliot Dater Presented PBI Crowdfunding Webinar
- Protecting Your Intellectual Property in a Digital Age
- Justine Kasznica Examined “Regulatory and Legal Issues Affecting the Commercial Use of Drones (UAV)”
- Justine Kasznica Moderated “Drive Forward: A Panel Discussion”
- Schnader Attorneys Present: Key Legal, Tax and Accounting Issues Impacting Early Stage Companies
- Schnader Attorneys Host Mentoring Luncheon – “Where the Law Can Take You”
- Albert S. Dandridge, III and Rachel Branson Spoke at the Philadelphia Diversity Law Group
- “Preparing for Upcoming Patent Law Changes” Practicing Law Institute Presentation
- Schnader Hosts Lunch and Learn Sessions with the Germantown Jewish Centre
- “Overview of Important Patent Prosecution and Litigation Changes under the AIA – A Walk Through the New Patent Landscape” Association of Corporate Counsel Delaware Valley (DELVACCA) Chapter Roundtable
- David Smith Participates in Panel at the National Symposium on Diversity in the Legal Profession
- Schnader Hosts the TAGLaw Northeastern Regional Conference
- Schnader Attorneys Serve as Co-Chairs for the Barristers’ Association Annual Martin Luther King, Jr. Memorial Breakfast
- Rachel Branson Serves as the Keynote Speaker at the Villanova Law Minority Student Associations Banquet
- Selection and Use of Trademarks