Services - Kagan Binder

Patent and Trademark Applications and Prosecution

We prepare and prosecute patent and trademark applications in the United States and around the world. Our clients range in size from small, start-up ventures to large, international corporations. Thus, not only do we help several Fortune 500 companies build and manage their respective intellectual property portfolios, but we also help start-up ventures and smaller businesses build or rejuvenate their portfolios to enhance company valuation and competitiveness. Our significant prosecution experience also includes representing either the Proprietor or the Opposer in European and Japanese Opposition proceedings.

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Client Counseling

Preparation and procurement of intellectual property rights is an important aspect of how we help our clients. But our abilities do not stop there. We also are experienced in helping clients formulate and execute global intellectual property strategies to help clients use intellectual property to build their business and be more competitive.

Design Around, Infringement, and Validity Opinions

A major portion of our practice involves evaluating patent validity and infringement as a prelude to patent enforcement, as expert witnesses in dispute resolution processes, and as counsel to help clients develop design around strategies for avoiding intellectual property rights of others.

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Technology Transfer Agreements

We are experienced in negotiating and preparing complex licensing, product development, and other technology transfer agreements. Collectively, we have negotiated and prepared hundreds of agreements relating to technology transfer and acquisition. Few other intellectual property firms have the experience and expertise that we do in the arena of technology agreements.

Due Diligence

We are also well known for undertaking IP due diligence investigations in connection with corporate acquisitions and divestitures. In these, we examine numerous intellectual property issues, including validity, commercial value of claim scope, impact of current agreements, and freedom to practice relative to third party patents. Collectively, we have evaluated intellectual properties in numerous deals whose cumulative value is several billion dollars.

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Litigation and Expert Witnesses

Because of our experience and insight, we are called upon to team with trial counsel in technology-related litigation, especially patent litigation. Our attorneys have not only been part of the trial team, but have also served as patent experts in litigated matters.