INTERNATIONAL INTELLECTUAL PROPERTY RIGHTS: DESCRIPTION

McKenna Long & Aldridge provides an integrated Intellectual Property practice with a global perspective. Our group has comprehensive experience in the development, licensing, protection, exploitation and enforcement of intellectual property rights.

We combine full-time intellectual property lawyers with experts from related practice areas who are skilled in dealing with the special issues posed by intellectual property in related areas of law such as European competition law, life sciences, and product liability. Our multidisciplinary approach offers clients comprehensive solutions to a full range of intellectual property and technology issues.

MLA's International IP practice is truly international in scope, with offices in Brussels, the heart of the EU. Our clients often have multinational goals, so our lawyers must be experienced and sensitive to these differences. Whether working with our non-U.S. clients with their problems and challenges around the world or assisting our U.S. clients as they expand overseas, we offer extensive experience in dealing with governmental entities, international partners, and investors throughout Europe, Asia and North America.

We work daily with a broad range of complex regulatory regimes in Europe, the U.S. and other regions. We combine our business and regulatory savvy with our preeminent reputation in litigating highly scientific and technical issues associated with novel technologies and products at risk to assist our clients in reaching their goals.

Areas of Focus

MLA's International intellectual property and technology lawyers have experience in each of the principal areas of intellectual property law.

Patents: The international nature of IP rights, juxtaposed by the national nature of patent rights and their infringement, may mean that there is a choice of jurisdiction in which to sue. This is especially so when litigating in Europe. There are complicated rules governing applicable law and jurisdiction. Our lawyers use their technical training and knowledge of patent law to assist clients in:

• Patent litigation in all areas of technology, in particular those relating to biotechnology, pharmaceuticals, medical devices, software and business method patents, and mechanical devices and processes
• Patent-related transactions, such as technology development, licensing and acquisition transactions, including due diligence review of patent validity and infringement

Copyright: MLA has a comprehensive copyright practice. We advise clients in the traditional copyright industries, as well as others that are faced with copyright issues due to the emergence of copyright as a primary form of protection for computer software, and the development of new media such as the Internet and online services. The copyright matters that we handle include the following:

• Gray market (parallel imports) and counterfeiting programs
• Infringement litigation
• Legislative and regulatory policy issues
• Licensing, publishing, distribution and other transactions
• Royalty negotiations and arbitration

Industrial Designs: Many European countries have a registration system for industrial designs; they differ in the extent to which the right granted is similar to a patent (i.e., full monopoly) or to copyright (requiring copying). In the U.K. there are two types of industrial design right: registered design right and unregistered design right. Both of these are regulated by statute but are not necessarily exclusive.

Trademark and Unfair Competition Matters: Our International IP Group has a significant practice in all areas of trademark and domain name law, including licensing and corporate acquisitions, enforcement of trademark and domain name rights, and litigation. We actively police and enforce trademark rights through traditional trademark and unfair competition litigation, and administrative dispute resolution proceedings under the new Uniform Dispute Resolution Procedure administered by ICANN, or in the U.K. by Nominet.

Trade Secrets and Confidential Information: MLA's International IP group provides legal advice and litigation representation to clients in trade secret disputes, and non-competition clause enforcement, both as discrete subjects and, more commonly, in connection with disputes involving other IP rights where claims of breach of confidence or misuse of trade secrets are common secondary claims.

Intellectual Property Transactions: A significant part of our practice involves advising clients in protecting and exploiting the value of their intellectual property assets and representing clients in transactions to acquire and commercialize intellectual property assets. We represent parties on all sides of these transactions: vendors and customers, licensors and licensees, developers and users, and employers and employees. Our work frequently involves:

• Transfer and licensing of intellectual property
• Development, procurement and distribution of technology products
• Strategic alliances, joint ventures and other collaborative arrangements
• Mergers and acquisitions of technology companies
• Equity investment in companies possessing significant intellectual property assets
• Intellectual property audits
• Confidentiality, non-compete, support and maintenance, outsourcing and technology escrow agreements

Computer and Information Technology: On a regular basis, we have designed proprietary rights programs for computer and software companies, negotiated major computer-related agreements for such companies and for financial services companies, telecommunications companies and other large users of information technology.

We also have significant experience in intellectual property litigation and other matters involving computers and information technology. Many of these disputes involve elements of both IP law and contract law. We increasingly find ourselves advising on the merits and use of Alternative Dispute Resolution (ADR) in IP disputes -- including the negotiation of appropriate dispute escalation and ADR clauses, advising on experts and mediators to decide issues or resolve disputes and on the process of mediation.

The Internet . We have performed significant work on issues such as:

• Protecting and licensing copyrighted content on the Internet
• Internet and online service provider liability
• Assisting clients in pursuing cybersquatters on the Internet and securing the assignment of domain name registrations held by third-party trademark infringers
• Advising clients on related issues such as privacy, defamation, electronic commerce, bank regulation, legislation, security, encryption and export controls
• Web site development and exploitation, including terms and conditions, and disclaimers

Data Protection and Privacy: The European Data Protection Directive has caused many companies, both European and international, to reassess their obligations in respect to data protection and the rights of data subjects. There are major differences between U.S. and European law, and we work closely in addressing issues relating to transfer flows of data and safe harbor. As a result, we are able to offer global data protection audits, so that our clients can effectively build compliance policies. We have advised multinational companies on national and cross-border issues such as the retention and use of employee and customer data.

In many instances, MLA has designed, implemented and analyzed the results of intellectual property audits, and has worked extensively with experts to value an intellectual property portfolio for licensing or other purposes. In other circumstances, our International IP group has worked closely with in-house legal advisors to design and implement an effective program for protecting inventions, trade and product names, advertising slogans and materials, and software and trade secrets. In conjunction with the audit, MLA's lawyers have devised strategies for maximizing the value of intellectual property assets, and for avoiding the infringement of such assets owned by other companies.

European Competition Law and Regulation: MLA has advised numerous clients on the European competition law implications of acquiring, protecting and exploiting intellectual property. In Europe, this is particularly important in relation to conflicts between claims to enforce IP rights and the protection afforded by EU and national laws to free competition. Issues also arise where manufacturers seek to rely on IP rights or agreements to hinder parallel trade between member states. Trademark delimitation agreements also give rise to complex problems at the interface.

Members of the team undertake and coordinate the work necessary to obtain competition clearances for mergers, acquisitions and joint ventures from the European Commission and from national authorities in the EU. The team also advises on other aspects of EU law, particularly relating to the free movement of goods, advertising and other regulatory laws within the EU.

Life Sciences: As rapid progress in biotechnology promises to revolutionize medicine, a host of novel legal issues arise. Our International IP group has advised clients at the leading edge of genomics, biotechnology research and the protection and commercialization of biotechnology intellectual property. We have specialized expertise in collaborative development and licensing agreements, strategic partnering arrangements and other forms of licensing agreements between biotechs and large pharmaceutical companies. Whether for product or platform technology companies, the team also has an extensive track record on technology transfer issues, advising universities, and other not-for-profits, as well as the companies licensing such technology.

Pharmaceuticals: MLA's International IP group has represented international pharmaceutical companies in patent infringement litigation, misleading advertising litigation, complex corporate and licensing transactions involving patent, trademark and trade secret rights, collaborative research and development agreements between pharmaceutical companies and research institutes, legislative matters and many other matters that arise at the intersection of food and drug law and intellectual property law.

For more information, please contact Song Jung.