Intellectual Property & Technology
With decades of experience and a reputation for innovation and attention to detail, BurgherGray’s IP, Tech + Data group offers a full range of legal services in the fields of comprehensive intellectual property expertise in patents, trademarks, trade secrets, copyrights, IP licensing and audits, and brand and content protection, as well as, complex technology transactions, advanced technologies and e-commerce, telecommunications, new media, privacy, cybersecurity and data management.
Our group has extensive in-house experience, making us uniquely situated to address the needs of general counsels. Our multi-disciplinary team is technically agile and able to quickly identify and deliver appropriate legal solutions that fit in-house needs.
Strategy, Commercialization and Compliance
Today’s advances in technology require that businesses embrace and integrate new platforms, devices and applications at a rapid speed in order to remain competitive. At BurgherGray, we believe to be legally aware is to be legally forewarned, and in the area of intellectual property and technology, this adage could not be closer to the truth. Working with our colleagues who specialize in other disciplines, such as finance, real estate, government and commercial litigation, we track and stay abreast of the laws, regulations, best practices and trends outside of intellectual property and technology, that impact intellectual property and technology. Our clients are frequently thinking ahead of the curve, and we work to be there with them so their advanced ideas can evolve with an eye to legal compliance and risk management.
For most enterprises, its name and reputation are its most valuable assets. The strength of one’s brand is measured by the strength of the goodwill embodied in one’s trademarks. BurgherGray excels in counseling clients in connection with the creation, maintenance and protection of their brands and related trademarks. We represent clients with matters that involve trademark analysis, filing, prosecution and protection, fair-use and dilution, false-advertising and unfair competition, rights of publicity, domain name protection, complex licensing and trademark disputes.
In this era of the copyright, one cannot conduct business without creating, or using someone else’s, copyright-protected materials. From traditional print, photography, film, and music to content marketing, social media, licensing and the latest content delivery systems, BurgherGray handles the full spectrum of copyright matters that are essential to doing business today. BurgherGray provides legal advice and counsel to clients in all aspects of copyright law, including registration, assignment, clearance, licensing and infringement issues, for all forms of copyright expression and commercialization. Today, how you navigate your copyright protection and licensing is not one-size-fits-all, and enterprises must make a plethora of choices based upon their business needs, relationships and financial resources. We help clients navigate the different decisions related to open source, Creative Commons (or copyleft) and rights that result from joint ventures, commissions and other creative partnerships, developing efficient copyright management programs specifically tailored for our clients strategic visions and economic realities.
Many of the new, inventive techniques and products being developed today could be patentable. Whether you are concerned with the patentability of software, a business method or widget, the steps required to obtain a patent, the validity of an existing patent or the extent to which conduct infringes or otherwise violates existing patents, BurgherGray attorneys are equipped to provide the necessary services. We advise clients regarding the patentability of their inventions and any infringement issues, perform patent validity and infringement searches, prepare and file patent applications, as well as assist our clients in pursuing and defending patent infringement claims.
Trade Secrets and Restrictive Covenants Protection & Enforcement
With years of hands-on success, BurgherGray brings a focused approach to trade secret protection and enforcement. Ranging from customer lists to proprietary analytics, BurgherGray has protected Fortune 100 trade secrets for decades, including:
- Cease and desist letters and negotiation
- Seeking and obtaining injunctive relief
- Complex litigation
- Designing and implementing internal protection programs
- Employee, consultant and partner agreements
IP Prosecution and Litigation
Intellectual property may serve as assets, but they also bring with them risk. BurgherGray’s intellectual property prosecutorial experience includes: researching, filing, litigation enforcing, defending and IP claims of all types (including, without limitation, opinions, application filings, cease and desist letters and other infringement and unfair competition claims) in various tribunals, as well as trademark and patent appeals and re-examination proceedings in the U.S. Trademark and Patent Office and Trademark Trial Appeal Board, plus copyright appeals and opposition and cancellation proceedings before the U.S. Copyright Office.
Our experienced litigation team has a strong record of success for defending and prosecuting high-stakes commercial disputes, has enforced, and defended intellectual property claims in multiple jurisdictions in federal and state courts. We employ our early case assessment and litigation strategy to address and aggressively protect our client’s complex business goals and requirements.
BurgherGray’s IP, Tech + Data team has advised complex organizations in the area of advanced technology for decades. We understand the impact of disruptive technologies, and the necessary risk management required to allow innovative companies to leverage them successfully. BurgherGray is versed in the regulatory schema that covers areas such as blockchain, smart contracts, deep and machine learning, big data, the Internet of Things (IoT), edge computing and biometrics. Using our multidisciplinary approach we are able to advise organizations who are undergoing initial coin offerings (ICOs) and building Fintech platforms.
New Media and Brand Protection
New media and social networks are ubiquitous and often legally complicated, especially when used in business. Let BurgherGray help you develop a new media program and strategy that meets your goals, risk management strategies and infrastructure requirements. Our lawyers cover a range of new media concerns, including VR/AR, games and entertainment, advertising transparency agreements, audits and procedures, social media and gamification, search and syndication agreements, team collaboration and social networks, branding and co-branding agreements, multimedia and online license and content agreements, content infringement issues and regulation.
- Conducted complete intellectual property audit for national non-profit organization, evaluating marketing procedures and affiliate programs.
- Represent Fortune 500 professional services firm in connection with the negotiation and drafting of business process and information technology-outsourcing contracts, with interpreting and responding to requests for proposals and with the negotiation of NDAs, software license, open-source and SaaS agreements. Supply contract negotiation overflow and secundment support for the same companies.
- On behalf of Tata Communications International, coordinated and participated with accounting and tax specialists and overseas counsel in planning, documenting and implementing international corporate restructuring project involving intercompany asset and stock dispositions, liquidations and foreign company mergers involving forty entities in over fifteen jurisdictions worldwide
- Represented Tyco International in connection with due diligence, planning and closing related to a tax-free spinoff of two major divisions
- Represented the Main One Cable Company in negotiation of $150 million supply contract, sale and lease of intangible property rights (IRUs) to cable system, landing station and interconnection rights, proposed joint ventures with other cable systems and related $120 million financings
- Represented Teleglobe Communications Corp in acquisition and divestiture of numerous indefeasible rights of use to terrestrial and subsea cable systems with value in excess of $350 million, and in development and ownership of consortium cable systems; represented carriers in acquisition of telecommunications equipment
- Drafted and negotiated for Tyco International (i) outsourced manufacturing agreements with overseas vendors with aggregate value of $60 million annually and (ii) various enterprise-wide software product license and maintenance procurements
- Drafted and negotiated software license agreement for Tata Communications International for construction and integration of software platform into telecommunications network
- Negotiated various software vendor agreements, including joint development, billing, equipment software licenses, marketing services, fraud detection and valued added services agreements; drafting and negotiation of telecommunications equipment purchase and finance agreements for several Fortune 500 companies
- Drafted and negotiated major commercial contracts on behalf of several Fortune 500 clients with national energy companies, and professional service providers (e.g. auditors, consulting firms)
- Prepared form information technology agreements, including intellectual property, license, development, equipment vendor, consultant, nondisclosure, agent and other specialized sales and procurement agreements for legal and procurement departments of publicly traded corporations
- Represented Teleglobe International, Tata Communications International and specialty landlord in Long Island, New York with respect to negotiation of office and collocation leases
- Represented publicly-traded clients in connection with lease assumptions, amendments and extensions, including guarantees and letters of credit, for properties located in the U.S., Europe and Asia
- Counseled Fortune 100 pharmaceutical company on employment matters, including performance management, corrupt practices and workplace investigations
- Developed SaaS template programs for several cloud-service providers