WE DO INTELLECTUAL PROPERTY. WE DON’T DABBLE IN OTHER AREAS.
Our focus affords you sound expertise and strategic guidance – from opinion work, to trial and appeal to due diligence and monetization. Whether you’re a Fortune 500 company with a comprehensive portfolio of patents, trade secrets, trademarks and copyrights, or a lone scientist with one revolutionary idea, we will protect your genius.
We also bring industry knowledge and a real-world business perspective to your IP challenges. Our team includes scientists, engineers and pharmacists with decades of concrete knowledge and subject matter expertise.
Carlson Caspers: THE GO-TO FIRM FOR PATENT-SAVVY COMPANIES®.
Having successfully handled dozens of matters on appeal to the Federal Circuit and other appellate courts, Carlson Caspers is a go-to firm for appellate advocacy. Successful appellate advocacy in the IP arena requires the ability to understand the legal and technical nuances of complex issues and to formulate arguments that will resonate with experienced and knowledgeable jurists. Over a quarter of our bench clerked for federal judges, most of whom served as law clerks at the appellate level, giving us extra insight into how to formulate those winning arguments. Whether defending a successful verdict or challenging an unfavorable outcome, Carlson Caspers has you covered.
We have extensive experience protecting against the unauthorized copying of our clients’ creative works in areas ranging from traditional publishing to Internet-based industries and social media. Our copyright infringement litigation practice couples a detailed knowledge of the technicalities of the copyright statute and familiarity with many of the technologies underlying our clients’ products or services.
Because copyright infringement litigation can involve considerable time and expense, we work with our clients to develop a litigation strategy that is designed for fast and effective results. In fact, the copyright statute provides for temporary or preliminary injunctive relief and in some cases, the ruling on the motion for a preliminary injunction can help position the case for resolution. If settlement is not an option, we’re fully prepared to take copyright disputes to trial, where our expertise as trial lawyers is unmatched.
Helping companies navigate the intersection of technology, law, and business is our strength. With the critical role technology now has in every aspect of a company’s business, our ability to serve our clients in that intersection is greater than ever before. We have experience working with many of the world’s most important technology companies, providing sound advice to our clients in a variety of areas—from corporate transactions, to confidentiality and consulting agreements, to product development agreements, to data privacy, protection and security. We help our clients keep up with quickly changing data protection laws, and defend against the ever-growing threat of serious data breaches. Our ability to understand data protection software on the code level is invaluable in negotiating contracts involving data security and cloud-services and in disputes arising from such arrangements.
Our focus for our Pharmaceutical & Biotechnology FDA Regulation and Compliance practice is helping companies navigate the intersections of intellectual property, FDA law, and the drug supply chain. Spearheaded by two pharmacists/lawyers with a combination of industry and legal experience, we are uniquely qualified to understand your business and legal challenges. Our understanding of the drug supply chain from payors to manufacturers is invaluable when advising our clients. We work with your team to solve your most complex regulatory, compliance, and intellectual property concerns.
Savvy business decisions require weighing many factors throughout your product’s life cycle such as pre- and post-approval regulatory strategy, intellectual property enforcement or defense, and competitor know-how. Whether negotiating with the FDA or other third parties, resolving disputes, or providing advice for protecting and supporting your business through the tangle of statutory/regulatory obligations you face, your business is our top priority.
Our pharmaceuticals team has an in-depth understanding of the drug approval and development process, including litigation arising from the Drug Price Competition and Patent Term Restoration Act (the “Hatch-Waxman Act”). For nearly two decades we have represented the world’s leading pharmaceutical companies. Our services include the assessment of patent portfolios, development of design-around strategies, preparation of detailed statements, and continue through trial and appeal. We’ve assisted companies seeking FDA approval to commercialize lower cost alternatives to myriad drug forms and classes, including products such as Tecfidera®, Sensipar®, Evoclin®, Imbruvica®, OxyContin®, Nuvaring®, Protonix®, Prilosec®, Uroxatral®, Zantac®, Xeloda®, Tarceva®, Simcor®, Focalin®, and many more. Our attorneys have represented industry leading companies such as Sun Pharmaceuticals, Teva Pharmaceuticals USA, Inc., Hetero Labs Ltd., Dr. Reddy’s, Glenmark Pharmaceuticals, Alembic, and Shilpa Medicare Ltd. Our attorneys have undergraduate and graduate degrees in the areas of pharmacology, chemistry, biochemistry, genetics, molecular biology, cellular biology, and chemical engineering.
Our technical expertise is a powerful tool in analyzing the validity and infringement issues associated with Hatch-Waxman litigation. Team members capably assess the science behind ANDA applications and develop strategies tailored to each matter. Our educational backgrounds coupled with our significant experience in this area, afford us a sound understanding of the unique business environment of the pharmaceutical industry and its implications for ANDA litigation.
We routinely help clients monetize their intellectual property. Knowing that enforcement through litigation may not always serve our clients’ objectives, we have experience with a wide array of monetization options to realize maximum value for intellectual property outside the courtroom.
Because successful monetization requires protecting and maximizing intellectual property from the outset, we help our clients institute effective safeguards, including employment agreements, confidentiality agreements and non-disclosure agreements. We also work hand-in-hand with our clients, and oftentimes their patent prosecution counsel, to take full advantage of their patent portfolio’s potential coverage. In one instance, our attorneys leveraged a single patent application to develop a robust patent portfolio (with over 50 accelerated filings and reissue applications) to fully cover a particular emerging technology area prior to seeking monetization.
Once our clients’ intellectual property is protected and fully developed, our attorneys then pursue additional monetization techniques. We have used an array of business-centric options to realize the full value of an intellectual property portfolio: brokering portfolio sales and assignments for tens of millions of dollars; negotiating in- and out-licensing arrangements valued in the millions, and sometimes billions, of dollars; and negotiating and arranging for joint development programs, including the formation of international joint ventures, to allow for further development of portfolios. We pride ourselves in identifying creative out-of-court solutions to maximize our clients’ return on investment for their intellectual property.
Our primary focus is the trial and appeal of patent cases. Our trial lawyers have tried more patent cases in the District of Minnesota than any other trial lawyers in the region. As a firm, we have earned the highest acclaim for our patent trial lawyers, distinguishing us over any of the other patent litigation firms in the country. There are fewer than a dozen active Fellows in the American College of Trial Lawyers who are also registered patent attorneys. Our firm is proud to have two of them.
We also have extensive experience in successfully advising and navigating clients through complex business disputes before patent litigation becomes necessary. Specifically, we help clients develop business plans to enforce and license patent portfolios; negotiate licenses; conduct pre-suit investigations including patent infringement and validity studies; conduct due diligence investigations in support of mergers, acquisitions and divestitures; develop patent procurement and patent prosecution strategies; and consult in the prosecution of key patents before the United States Patent and Trademark Office.
Carlson Caspers offers patent counseling, prosecution and licensing expertise for sophisticated high technology companies, innovators, and prospective patent owners to protect their intellectual property rights.
In the United States, the patent prosecution process requires extensive research and intricate knowledge of the United States Patent and Trademark Office (USPTO), especially if the patents are complex and susceptible to challenges by competitors.
Our registered patent attorneys work with clients in the electrical, software, telecommunications, pharmaceutical, chemical, life sciences, and other high-tech arenas, and come from various scientific, engineering, and technical backgrounds.
Carlson Caspers attorneys devote hundreds of hours advising clients on the legal ramifications of their patent filings before, during, and after the patent application process. Carlson Caspers attorneys have extensive experience in licensing patents, for example to increase portfolio coverage on a product or to monetize unused patents.
Legal services for portfolio management include the following:
- Assessing patentability and validity of the invention
- Conducting prior art and patent landscape research both in the United States and in foreign countries
- Developing patent procurement strategies for domestic, international, and foreign jurisdictions
- Preparing, documenting, and filing applications and other documents with the USPTO
- Filing, docketing, and coordinating prosecution of foreign applications
- Working with USPTO examiners during the application process
- Providing freedom-to-operate assessments and related clearance work.
The firm’s go-to reputation and client success for patent litigation are well known. Chambers USA, Best Lawyers in America, IP Stars, Super Lawyers, and others rank Carlson Caspers in the top echelons of the legal profession.
OUR PATENT PROSECUTION/LICENSING TEAM
We are uniquely positioned to handle the often complicated aspects of post-grant proceedings before the USPTO. Our dedicated team of USPTO-registered litigators have extensive experience that allow us to successfully manage and resolve Inter Partes Reviews (IPRs), Post Grant Reviews (PGRs), patent interferences, and derivation proceedings—from initial review by the USPTO Patent Trial and Appeal Board (PTAB) through final hearing by the US Court of Appeals for the Federal Circuit.
Since the enactment of the America Invents Act (AIA) in September 2012, we have handled dozens of IPRs, making us one of the top litigation firms actively engaged in this practice area. We regularly develop strategies that help our clients both invoke and avoid those proceedings. Leveraging our vitally important litigation skills and deep technical expertise in the life sciences, we proactively establish strong positions that, in many cases, prevents long and costly opposition.
We understand the importance of establishing, maintaining and protecting our clients’ integrity in the market place. We routinely counsel and develop policies and strategies to develop and defend our clients’ trademark and trade dress rights—oftentimes a company’s most valuable asset—and are well experienced enforcing those strategies in litigation before both administrative tribunals and federal courts. As most of the attorneys within our ranks possess technical backgrounds and significant experience litigating scientific disputes, we are also uniquely qualified to analyze and pursue claims for false advertising and unfair competition involving claim-substantiation issues. Our goal is to ensure our clients are competing on a fair and level playing field. Another key aspect to ensuring a level playing field for certain of our clients, and a particular point of focus for our team, concerns geographic indications and appellation of origin. Our attorneys have litigated trademark, service mark, trade dress, false advertising and unfair competition claims, including Internet-based issues such as website and domain name disputes and social media, throughout the country.
We have represented Fortune 500 companies, midsize companies, and small, emerging high-tech companies and have had success enforcing our clients’ trademark and trade dress rights through negotiation and diplomacy. Where litigation is necessary, we litigate to win in court, at the ITC, the Trademark Trial and Appeal Board, through UDRP and NAD/NARB proceedings, and arbitration. We also help clients with portfolio management, guiding our clients through business transactions involving IP portfolios and individual IP elements, including trademarks.
As a firm focused exclusively on intellectual property, we appreciate the value of our clients’ proprietary information and trade secrets. Theft or misappropriation requires immediate, aggressive action by attorneys at the forefront of the field, with national litigation experience. We have successfully represented clients in fast-paced, complex disputes in every phase of litigation, from pre-suit investigations through trial and appeals, before federal and state courts across the country. We have prosecuted and defended against claims involving technical and proprietary information within a broad range of industries—from hedge funds and financial services to biomedical devices, pharmaceuticals, agricultural equipment, telecommunications and construction materials—and are skilled at presenting clear explanations of complex technologies to generalist judges and juries.
We advise our clients on how to protect high-value information through the use of confidentiality, nondisclosure, noncompetition and other agreements with key employees, independent contractors, government agencies and third-party vendors. In addition, we counsel clients on technology licenses, joint ventures and other strategic agreements designed to protect confidential information and preserve a competitive advantage. In providing our clients with specialized advice to safeguard their proprietary information and trade secrets, we will navigate our clients through the new protections provided by the recent Defend Trade Secrets Act.