Services

Conley Rose has decades of experience handling the entire spectrum of IP matters, including managing IP portfolios; preparing and prosecuting patent and trademark applications; performing IP clearance analyses and due diligence; negotiating IP agreements; and managing IP litigation and pre-litigation services.

Our attorneys have the technical and legal expertise to successfully manage the entire life cycle of our clients’ IP assets, from conception and preparation through registration, maintenance, and enforcement. Our experience handling a diverse blend of IP matters enables us to serve as a “one-stop-shop” for all of our clients’ IP needs. This benefits our clients in terms of enhanced efficiency within the IP workspace and fewer service providers to maintain and manage.

Patent Prosecution

Conley Rose delivers patents with quality, high efficiency, and expertise in numerous technology fields. We are go-to patent prosecution counsel for numerous prominent corporations, including IBM, Hewlett Packard Inc., Sprint, Texas Instruments, Huawei, FutureWei, ON Semiconductor, Blackberry, Texas Heart Institute, Baylor College of Medicine, and many others.

We are similar in size to the patent groups of many large law firms, but we aren’t burdened with the overhead of hundreds or thousands of non-IP employees found in general practice firms. This means that we can usually do hourly work at a lower total cost and, at the same time, provide high-quality, fixed fee prosecution work without cutting corners or worrying about budgets and realization rates.

Patent prosecution forms the core of our practice. We have filed an average of about 2,000 patent applications annually over the past 5 years (with approximately 25% being foreign applications), and we have filed over 26,000 patent applications since our inception in 1991. Our practitioners specialize in a variety of technical areas, including electrical engineering, chemistry and chemical engineering, mechanical and civil engineering, and biotechnology. We have expertise in protecting innovations in a wide range of technologies, from artificial intelligence and automotive devices to Wi-Fi and Wellhead equipment.

We have two primary goals when preparing and prosecuting patent applications. First, we craft patent specifications, claims, claim amendments, and prosecution arguments with our clients’ business goals in mind. For instance, we may use different strategies or tactics for clients who aggressively assert their IP than for clients who seek to establish greater freedom to operate in a particular technology area. We also consistently deliver a high-quality product for every project. For example, we employ several levels of review to ensure that all of our patent work meets both our own internal standards as well as our clients’ drafting requirements and particular business objectives.

Litigation

Intellectual property litigation has been a focus of ours since our founding in 1991. Our attorneys in the litigation practice group have broad expertise in the prosecution and defense of all types of IP lawsuits in both state and federal court, and are particularly experienced in patent, trademark, and trade secret litigation. We also have a successful track record representing clients in arbitration, mediation, and other alternative dispute resolution procedures.

IP cases can be both technically and procedurally complex. We are keenly aware that IP cases can also have a significant impact on our clients’ business, whether in protecting valuable innovations or in defending against unscrupulous competition. Thus, our litigation attorneys have both the courtroom and technical expertise necessary to teach and help judges and juries better understand even the most sophisticated technologies, and to successfully manage the many diverse legal issues at stake in IP cases.

All IP cases are not the same. A successful strategy in one case may not work for another case. Our approach to effectively managing IP litigation begins with and remains solidly focused on our clients’ business objectives. We tailor our strategies for each individual case, from early case assessment, through discovery, pretrial injunctive remedies, trial, and appeal, including appeals to the Federal Circuit. By the same token, careful consideration of our clients’ business objectives may often mean that a case can be “won” by resolving it short of a trial.

For every case, we rely on our broad pool of IP talent to bring to bear a lean and cohesive team to quickly focus on the winning issues and efficiently manage all aspects of the case. Using a lean and cohesive team of veteran litigators often achieves better results quicker and with reduced costs, as opposed to using an army of young associates and “scorched-earth” litigation tactics, which often do nothing more than prolong litigation and drive up client costs.

Post-Grant Proceedings

In September 2012, Congress dramatically changed our patent landscape by implementing the Leahy-Smith America Invents Act, known as the “AIA.” Some of these changes created administrative proceedings that have proven to be more efficient and less costly alternatives to litigation for challenging the validity of patents. Conley Rose attorneys have been on the leading edge of these significant developments, including the new Inter Partes Review (IPR) process. Our attorneys successfully prosecuted and defended some of the very first IPR proceedings instituted.

The members of our Post-Grant Proceedings group are registered patent attorneys who have the best combination of technical knowledge and litigation experience to handle all aspects of proceedings before the USPTO. This practice covers all administrative proceedings before the Patent Trial and Appeal Board (PTAB) and other USPTO proceedings, including:

  • Inter Partes Review (IPR)
  • Post-Grant Review (PGR)
  • Covered Business Method (CBM) Review
  • Ex Parte Reexamination
  • Supplemental Examination
  • Derivation proceedings

All of our Post-Grant practitioners are registered to practice before the United States Patent and Trademark Office. We leverage our deep technical knowledge gained through years of patent procurement, together with our significant litigation experience, in order to develop winning strategies for all types of patent disputes before the USPTO.

Consideration of Post-Grant Proceedings should be an integral part of any comprehensive, business-focused IP strategy. The attorneys in our Post-Grant Proceedings group will strive to understand your particular business objectives and will help you to develop well-integrated and cost-effective strategies using all of the available post-grant tools.

Trademarks

The attorneys in our trademark group have significant expertise in preparing and prosecuting trademark applications, conducting clearance searches, and successfully managing trademark oppositions. We have filed nearly 15,000 trademark applications and currently maintain an active portfolio of over 3,000 trademark applications and registrations worldwide.

Conley Rose represents a number of large, well-known companies in connection with trademark matters, including Fluor Corporation, National-Oilwell Varco, Printing Research, Mr. Gatti’s, LP, Drilltec, and Daniel Industries. Most of our clients have entrusted us with the management and development of their portfolios including US and foreign marks. We have established valuable, long-term relationships with associates in most foreign countries, and we work regularly with these associates in prosecuting and maintaining our clients’ foreign trademark portfolios.

In addition to our experience in obtaining protection for traditional trademarks, we have also successfully registered unconventional marks such as shape, color, and trade dress. For example, we registered a color mark for a printing product, and have successfully stopped every known competing use without ever filing a lawsuit.

Conley Rose also regularly assists its clients in protecting their brands by filing and defending trademark oppositions and cancellation proceedings. Here are a few examples:

  • Peak Rock Capital LLC v. Shot-Rock Capital, LLC – we successfully represented the trademark owner in opposition to an infringing mark and negotiated a co-existence agreement limiting the use of the conflicting mark.
  • Elbit Systems Ltd. v. Samsung Electronics Co., Ltd. – we successfully represented the trademark owner in negotiating a global co-existence agreement with the trademark applicant.
  • Gordon * Howard Associates, Inc. v. Atlanta Auto Tracker, Inc. – we represented the petitioner for cancellation of registrations and successfully negotiated a settlement forcing the trademark registrant to select new marks.
  • Peak Performers, Inc. v. St. Vincent DePaul Rehabilitation Service of Texas Inc. – we successfully represented the trademark owner against a petition to cancel its trademark registration.
  • Taco Bell IP Holder, LLC v. Mr. Gatti’s, LP – we successfully represented the trademark owner against cancellation of its trademark registration.

Copyrights

Conley Rose has a long history of representing individuals and corporations in protecting their copyrighted works and defending against third-party copyright allegations. We have experience registering copyrighted works, drafting and negotiating copyright license agreements, including joint-development agreements, assignments, and work made for hire agreements, and successfully pursuing copyright litigation involving a wide variety of copyrighted works, from architectural works to camouflage patterns.

Our attorneys also have substantial experience utilizing the Digital Millennium Copyright Act (“DCMA”) to enforce our clients’ copyrights, including “take down” notices to force website owners and internet service providers to remove unauthorized copyrighted materials from websites.

Counseling, Opinions, and Diligence

Counseling clients concerning intellectual property is an adjunct to all of our other services. Our counseling work often includes legal opinions on patent validity and infringement, and on trademark infringement and registrability. We often provide advice on the selection and use of trademarks and service marks, and recommendations on the protection of inventions, trade secrets, and copyrightable materials. We are also frequently engaged to analyze patent portfolios and to advise clients as to a portfolio’s particular focus and strengths or weaknesses.

Our clients also frequently ask us to analyze IP issues as a part of the due diligence process in business transactions, particularly in mergers and acquisitions involving companies with significant IP holdings. Our work in this area ranges from verifying the existence of enforceable intellectual property to more substantive portfolio analysis and to assisting in the valuation of the intellectual property that is possessed by a company under review.

Intellectual Property Agreements

Conley Rose often assists its clients in structuring, drafting, and negotiating many different forms of intellectual property agreements. Our attorneys assist clients in IP licensing, technology transfer agreements, service agreements, software licensing, marketing and distribution arrangements, franchise agreements, non-disclosure/confidentiality agreements, technology development agreements, work made for hire agreements, and advertising and entertainment agreements. In addition, our transactional practice has substantial experience with e-commerce and internet-related transactions, including agreements for web site development and hosting, co-branding, Internet-based services, and content licensing.

Unfair Competition

Unfair competition laws often play an important role in protecting our clients’ intellectual property. Properly implemented, unfair competition laws can and should fill in the voids left open by other forms of intellectual property. Our attorneys have significant experience in successfully integrating both state and federal unfair competition laws in the complex intellectual property landscape. We have a successful track record of integrating unfair competition laws in our clients’ day-to-day business and employment practices, as well as in protecting and defending our clients in all forms of litigation that increasingly involve forms of unfair competition.

Conley Rose attorneys have a deep understanding of the many unfair competition issues that may impact your daily business. Congress implemented the Defend Trade Secrets Act in 2016. In 2013, Texas implemented its own version of the Uniform Trade Secrets Act. If your business faces an infringing website, a UDRP proceeding may provide a very cost-effective remedy. We can help your business maximize the value of its intellectual property by addressing these and other developments in unfair competition law, including the following important issues:

  • Trade secrets (including DTSA and TUTSA developments)
  • Trademark, Lanham Act, and false advertising claims
  • State trademark claims
  • Business disparagement
  • Tortious interference with contracts
  • State common law unfair competition
  • Domain name disputes and UDRP proceedings
  • Copyright litigation and DMCA take-down procedures