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Intellectual Property

As Hawaii continues to expand into a technology-based economy, Goodsill has expanded its intellectual property capability as a core practice area. With experienced counsel licensed to practice before the United States Patent and Trademark Office, we can assist our clients in all aspects of intellectual property protection and technology related transactions. Examples of our services include:

  • Patents – conduct innovation-sensing of technology; develop and manage strategic patent portfolios domestically and abroad; represent clients in the preparation, filing and prosecution of patent applications; conduct patent examiner interviews to facilitate prosecution; provide opinions on the invalidity, non-infringement and unenforceability of patents; provide competitive landscape analysis; and, represent clients before the Board of Patent Appeals and Interferences.
  • Trademarks and Advertising – counsel regarding the selection, availability, acquisition, use and registration of domestic trademarks and service marks; coordinate and manage trademark portfolios abroad; monitor and enforce trademark rights; counsel on claims of unfair competition, and false advertising; represent clients before the Trial Trademark and Appeals Board, including the opposition and cancellation of marks.
  • Copyrights – assist clients in obtaining copyright protection in the United States Copyright Office and copyright offices of other countries; represent clients before state administrative agencies; represent clients in federal court regarding copyright infringement; preparation of copyright and other legal notices for print, software, internet and other electronic media; counsel on the Digital Millennium Copyright Act; and assist clients with royalty generation arising from contract negotiations and performance rights societies.
  • Trade Secrets and Confidential Information – prepare and negotiate non-disclosure agreements, employee confidentiality and proprietary rights agreements, and company trade secret policies; perform trade secret assessments; advise on proper confidentiality marking and legends; and, counsel on mitigation of trade secret misappropriation by new employees from competitors.
  • Domain Names, Internet and E-Commerce – represent clients regarding domain name issues and online business disputes; counsel on federal Anti-cybersquatting Consumer Protection Act and the Uniform Domain-Name Dispute Resolution Policy; and, advise on an array of online publishing and digital distribution issues and related intellectual property rights.
  • Licensing – prepare and negotiate all forms of intellectual property licensing agreements, including patent, trademark, copyright, trade secret, and open source licenses; advise on intellectual property licensing policies and programs; assist in intellectual property acquisitions or sales; and, advise on antitrust issues regarding the use of intellectual property rights.
  • Transactions with Intellectual Property Components – advise on intellectual property issues with regard to mergers, acquisitions, outsourcing, consulting, and joint development; conduct intellectual property audits and due diligence associated with the acquisition or license of technology and with pre-IPO investments.
  • Intellectual Property Asset Management – analyze existing intellectual property assets; locate and develop new intellectual property assets; create and track intellectual property inventories; design intellectual property strategies; advise on the exploitation of intellectual property assets.
  • Entertainment and Media – represent clients with regard to creative property rights, and media rights, including internet and domain names; prepare and negotiate film, television and music contracts; represent clients with regard to piracy and unauthorized use issues; and, counsel on claims of violating celebrity, privacy and publicity rights.
  • Border Control – coordinate with U.S. Customs and Border Protection to prevent the importation into, and sale and distribution of infringing goods in the U.S.; obtain injunctive relief and restraining orders, and facilitate seizures to stop the manufacturing and distribution of counterfeit and pirated goods.

As part of a full-service law firm, our Intellectual Property Group can draw upon attorneys in our other practice areas to provide the right mix of skills and intelligence to meet our clients’ needs, from creation through enforcement. Some of our clients with emerging technologies seek our intellectual property services to develop a strategic portfolio and to protect key technology assets. Others seek our intellectual property services with respect to their corporate, labor, licensing, contracting and other business needs, such as legal entity formation, mergers and acquisitions, employment law and government regulation.

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