Intellectual Property

Goldberg Segalla’s Intellectual Property Practice Group protects the ideas, innovations, inventions, imagery, and creative compositions that propel successful business ventures and create strong brands.

The GS IP team blends its members’ real-world work in scientific and high-tech disciplines with exceptional business acumen and deep experience handling patents, trade secrets, copyrights, trademarks, and other IP matters. The result is a tech-savvy and efficient team dedicated to helping clients develop practical business strategies that maximize the return on their investments and innovations.

When an idea becomes an invention and needs to be protected, the lawyers at GS can help the inventors obtain the necessary patent protection in this country or anywhere else in this world. When intellectual property assets require protection from infringement or proactive measures to mitigate risk, our team brings extensive experience litigating and trying complex commercial and intellectual property cases. Because we have the ability to translate highly technical concepts effectively to courts, administrators, opposing counsel, and other parties, we are often able to negotiate creative and more efficient solutions to disputes. When that is not possible, this strengthens our ability to enforce our clients’ rights in litigation and other proceedings.

In addition, our pharmaceutical clients can count on Goldberg Segalla's Hatch-Waxman Litigation team, a cross-disciplinary group of highly accomplished attorneys practicing in both our Intellectual Property and Life Sciences Practice Groups, and dealing exclusively with matters involving the federal Drug Price Competition and Patent Term Restoration Act, or Hatch-Waxman Act. Our litigators have represented both branded and generic pharmaceutical companies and, therefore, are able to craft an appropriate strategy based on each client’s specific goals and needs. We use our experience and technical knowledge to counsel clients on all aspects of Abbreviated New Drug Applications (ANDAs) filed under the Hatch-Waxman Amendments, and or litigators routinely represent and advise pharmaceutical companies on pre-litigation strategies, FDA approval, prior art analysis and opinions, Paragraph IV certifications, trials, and appeals.

Goldberg Segalla serves businesses and professionals across a broad spectrum of industries, and our clients include global market leaders as well as startups, entrepreneurs, inventors, and investors. That gives our firm-wide GS IP team an understanding of, and appreciation for, the unique legal, financial, and practical concerns of companies that operate in many different sectors — including electrical and mechanical technology, software and internet technology, smartphones and wearable devices, pharmaceutical products, medical devices, food and beverage manufacturing and retail, agriculture, aviation, engineering, consumer and industrial products, the arts, sports, entertainment, and others.

Contact us for:

  • Patents — The GS IP team has several registered patent attorneys with experience building and enforcing patent portfolios at the district courts and at the International Trade Commission (ITC). In addition to patent infringement litigation, we regularly handle post-grant proceedings at the U.S. Patent and Trademark Office, such as inter partes reviews (IPRs) and reexamination.
  • Trademarks and copyrights — We handle everything from searches and registration to dilution claims, trademark and trade dress infringement litigation, copyright infringement litigation, false advertising claims, Trademark Trial and Appeal Board proceedings, and other disputes.
  • Trade secret identification and protection — We have extensive experience handling trade secret misappropriation litigation and we counsel clients on establishing and protecting their trade secrets, including new developments under the Defend Trade Secrets Act.
  • Unfair competition — Our team brings experience handling complex counterfeiting issues, unfair competition and business practices actions, import matters before the International Trade Commission (ITC), and more.
  • Licensing and portfolio management — We prepare, negotiate, and resolve disputes involving licensing agreements over patents, trademarks, copyrights, and other assets. Our team assists both innovators and investors in monetizing IP portfolios through the sale, acquisition, financing, and transfer of assets. We counsel and guide businesses through all things IP, including on “work-for-hire” doctrine and issues concerning employee inventions and ownership rights.
  • Integrated business services — The GS IP team works collaboratively with experienced transactional attorneys across our footprint who have diverse knowledge and experience with contracts, particularly those containing intellectual property components, and can assist either from the commencement of a case or on an as-needed basis to provide unparalleled guidance on critical transactional elements of both contested and negotiated IP matters.

Knowledge and Experience That Makes a Difference

The GS IP team is led by a registered patent attorney who brings more than a decade of experience serving technology companies, entrepreneurs, and investors from one of the country’s most prominent IP firms. Our intellectual property team draws from a broad range of Goldberg Segalla’s litigation and transactional practices, resulting in collective experience solving IP problems that involve a vast array of academic disciplines, cutting-edge innovations, and industry sectors.

For example, our registered patent attorneys and other GS lawyers have backgrounds in fields like Internet technologies, software, digital communications, signal and image processing, semiconductors, microprocessors, medical devices, chemistry, biology, and mechanical engineering. One member, before becoming a patent lawyer, had the unique experience of working on the Human Genome Project. Another serves on the American Bar Association’s Internet of Things Committee, within the ABA’s Section of Science and Technology. Our collection of knowledge and skill brings a distinct advantage to clients in disputes involving complex scientific and technical issues.

Other members of our Intellectual Property and Business and Commercial Practice Groups have extensive backgrounds as in-house counsel — giving our team an extraordinary appreciation for the value of IP assets to a company’s vision and strategy.

Representative IP Litigation Matters

  • Asserting patents on behalf of an industry leader for peer-to-peer I/O technologies used in smartphones and other mobile devices
  • Representing a maker of enterprise data backup and restoration technologies in patent litigation involving some of the world’s largest software and hardware companies
  • Representing the owner of an activity-monitoring technology patent in district court litigation and in an inter partes review proceeding against a manufacturer of wearable fitness monitors
  • Defending one of the world’s largest auto makers in patent litigation involving vehicle-to-smartphone connectivity technology
  • Handling inter partes review proceedings for a long-established global pharmaceutical leader involving a patent for antifolate combination therapy
  • Handling ITC Section 337 litigation involving electronic devices that have a retractable USB connector
  • Representing a major tobacco company in a trademark infringement case against sellers of counterfeit cigarettes, resulting in the successful seizure of all counterfeit product, recovery of several hundred thousand dollars in statutory damages, and a permanent injunction
  • Defending a modeling agency in a jury trial in the Southern District of New York against copyright infringement and tortious interference claims brought by a photographer seeking over $10 million in damages
  • Defending a mold remediation company and its owner against a copyright infringement action brought by a software developer
  • Defending an apparel distributor against allegations of copyright infringement arising from handbags it sold
  • Defending a warranty administrator against trademark claims based on conduct of its licensee
  • Obtaining a favorable decision in an action in which the plaintiff, claiming exclusive rights in a geographic descriptor, sought to prohibit a restaurant from using its chosen geographically descriptive trade name
  • Defending a regional craft brewery against claims of trademark infringement from a nationally distributing brewery
  • Handling litigation involving antitrust violations and trademark infringement for an international consumer products company in connection with the marketing and sale of popular insoles and footwear inserts
  • Representing a medical supplies wholesaler in a trademark and unfair competition action concerning importation of international grey market goods
  • Defending a middleman distributor against major textbook publishers seeking $5 million in a case involving foreign and domestic distribution, with claims alleging trademark infringement, copyright infringement, unfair competition, and fraud
  • Successfully representing an employer and newly hired employees in litigation concerning restrictive covenants and trade secrets

The Full-Service IP Advantage

Our clients receive the dedicated intellectual property focus and credentials they expect from an IP boutique, plus the strength and capabilities of a dynamic firm acclaimed in several practice areas nationally and internationally.

Mature companies and startups alike benefit from the seamless integration of the GS IP team with practices across our firm. We build strong relationships with clients, and heighten efficiency in all our work, by serving an extensive range of legal needs in areas such as: