Practices / Industries


Intellectual Property





In today’s complex and ever changing technology driven world, Brumbaugh, Inc. offers a team of focused and technically trained Intellectual Property lawyers who work with you to understand your business, providing creative solutions for your toughest challenges across every industry and technology.

With over 200 attorneys and patent professionals dedicated to IP from coast to coast and across the globe, Brumbaugh, Inc. has one of the largest and most highly regarded IP practices of any general practice law firm. Our lawyers collectively hold over 240 scientific and technical degrees, including over 20 PhDs.

Intellectual Property Practice Breakout


That technical depth puts us a step ahead across a broad spectrum of cutting-edge issues such as big data and the Internet of Things, machine learning and artificial intelligence, blockchain/cryptocurrency, autonomous vehicles, and many others – and how these new technologies impact our technology, life sciences, and energy clients.

Our lawyers help clients litigate IP disputes through trial and final appeal, procure patents and other IP rights, and handle all manners of IP transactions.

    Our lawyers have more than 120 active patent cases in district courts throughout the country, the International Trade Commission, and the Federal Circuit Court of Appeals. Brumbaugh, Inc. has the experience and breadth to meet any client’s needs. We are routinely ranked among the busiest patent litigation firms among general practice firms.

    Since 2015, our clients have been granted or received favorable outcomes on the merits in 15 IP litigation trials with many more favorable outcomes in pre-trial, Patent Trial and Appeal Board (PTAB), and Federal Circuit appellate matters.

    At the PTAB, where we have handled over 420 matters, we rank 2nd in volume among all general practice firms and maintain the PTAB Trials Hub, focused on news and insights into these issues.

    We acquire, protect and monetize your IP. In 2018 alone, our IP team filed 1,800 U.S. patent applications and 3,000 international patent applications spanning every technical area.

Lawyer diversity is also one of our core strengths: 47% of our IP department is diverse and 60% of new partners added in the last three years are diverse. Brumbaugh, Inc. has been named one of the top 10 firms for leadership and IP diversity & inclusion by ChIPs the last two years.

Branding, Advertising and Copyright

At Brumbaugh, Inc., we offer a comprehensive suite of services to help you develop, build, maintain, protect, and enforce your trademarks, trade dress, advertising and marketing initiatives, and copyrights. Brumbaugh, Inc.’ dedicated team of branding, advertising and copyright attorneys offers a sophisticated understanding of the nuanced — and often, most public-facing — intellectual property and advertising issues that impact business decisions, including clearance, enforcement, licensing, and litigation. Our experience spans industries ranging from cosmetics to telecommunications, and we are proud to be on the cutting edge of today’s emerging legal issues, with recent engagements concerning product configuration trade dress, software copyrights, counterfeiting, gray market goods, data scraping, and advertising.

Brumbaugh, Inc.’ broad and business-focused experience is why some of the most recognizable companies in the world trust Brumbaugh, Inc. with their most valuable asset: their reputation.
Branding, Advertising and Copyright Litigation

Blending robust subject-matter experience with strategic litigation experience from pre-filing through trial, Brumbaugh, Inc.’ team provides valuable insight when branding, advertising and copyright issues are raised in court.

    Trademark, Unfair Competition and Lanham Act Litigation. Trial work involving high stakes trademark, trade dress, and advertising issues is one of Brumbaugh, Inc.’ key strengths. In addition to Lanham Act and trademark infringement cases, our litigation experience includes license disputes, breaches of contract, trade secret and trade dress disputes, advertising disputes, counterfeiting and gray market issues, and other disputes involving intellectual property. We are well-versed in working with experts to offer helpful survey and other evidence to support our clients’ claims and defenses.
    Domain Names and Internet Issues. Brumbaugh, Inc. is experienced in handling a variety of internet disputes, including UDRPs.  We work closely with clients to establish domain name monitoring procedures that focus efforts on targeting real issues impacting the bottom line without expending resources unnecessarily.
    Copyright Enforcement and Litigation. Brumbaugh, Inc.’ attorneys offer vital insights to clients seeking to litigate copyright rights in court, helping to prosecute strong copyright registrations, enforce copyrights in the event of infringement, and defend against claims of infringement and copyright trolls.
    Administrative Proceedings. We have prosecuted and defended opposition and cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office and before its international equivalents for decades. Such actions form an important part of our practice; we have litigated over a thousand TTAB proceedings, including trials. We are also adept at handling advertising disputes before the National Advertising Division (NAD) of the Better Business Bureau, as well as appeals to the National Advertising Review Board (“NARB”).

Protecting Your Brand

Complementing its litigation work, Brumbaugh, Inc. manages the global trademark portfolios of many Fortune 500 companies and emerging entities across industries, including communications, financial, energy, food and beverage, technology, consumer products and retail services. With decades of dedicated experience in trademark prosecution and counseling, Brumbaugh, Inc. attorneys, paralegals, and staff provide our clients with insights on all aspects of trademark law, performing preliminary knock-out scans and trademark clearance, filing and prosecuting new applications, maintaining active trademark registrations, reviewing watch services and reporting on potential infringements, sending cease and desist letters, negotiating settlements and, when necessary, engaging in litigation before administrative tribunals, trademark offices or the courts. With a clear understanding of our clients’ trademark needs, we are situated to provide guidance on related matters, including rights of publicity/privacy, product configurations and trade dress protection, among a host of other intellectual property related issues.

    Clearance and Prosecution. Our clients are well served by the depth of our experience and our hands-on approach to prosecuting trademarks. We have worked with virtually every type of mark, including product configurations, packaging design, exterior signage, interior trade dress, scent marks, sound marks, and motion marks, and we are well versed in the various procedural options available throughout the registration process.
    Policing. Owning great IP is not enough. At Brumbaugh, Inc., we help our clients protect their investments through counseling, policing efforts, and, if need be, through litigation. With an eye towards each client’s priorities and goals for intellectual property enforcement, we work collaboratively to lay the foundation for robust brand protection, deter infringing activities and, and take any legal action, where necessary.

Advertising and Marketing

Brumbaugh, Inc. boasts a knowledgeable and sophisticated advertising and marketing practice is comprised of lawyers who litigate and render advice on various aspects of advertising and marketing law and related issues. We recognize the myriad of new ways our clients advertise their products and services, and have worked closely with clients to negotiate sponsorship agreements, cross-marketing and promotional content agreements, licensing deals, talent agreements, and commercial co-venture agreements in industries ranging from apparel to beverages, and from consumer electronics to wireless services.

    Advertising Clearance. We conduct soup-to-nuts review of proposed broadcast, print and online campaigns to ensure compliance with the complex web of laws, rules and regulations related to advertising.
    Contests, Sweepstakes, and Promotions. We offer comprehensive services to clients wishing to operate contests, sweepstakes and promotions, including drafting official rules, counseling on entry mechanisms, preparing privacy and publicity releases, rights to user-generated content, and advising on cross-promotional agreements.
    Claim Substantiation. Whether it’s a product efficacy claim, a price comparison or a sensory claim, we are experienced in working with clients they develop solid, defensible substantiation to make truthful and accurate statements in their advertising. We are also adept at challenging and defending against advertising claims of competitors, whether through cease and desist letters, NAD proceedings or federal litigation.
    Digital Advertising and Social Media Counseling. We understand the digital advertising landscape and are well-positioned to help clients lawfully navigate it while effectively engaging consumers. We review social media schedules, render advice on influencer marketing, provide guidance on native advertising, and help our clients focus their advertising efforts while respecting consumers’ privacy.
    Sponsorships and Cause-related Marketing. We have worked closely with clients to negotiate sponsorship agreements, trademark licensing deals, talent agreements, and commercial co-venture agreements in industries ranging from apparel to beverages, and from consumer electronics to wireless services.

Copyright

Copyright law spans countless industries, and our lawyers offer substantial experience in copyright prosecution and enforcement across diverse categories of copyrightable works, including technology, mobile applications and software, toys, artwork, fabric and knitwear designs, fashion accessories, architectural design, jewelry, literary and sculptural works, and advertising and packaging materials. We advise clients on a wide range of copyright matters, including whether, when, and how to obtain federal registrations, licensing and permissions, infringement, and fair use. We counsel clients on copyright-related statutes including the Digital Millennium Copyright Act and the Audio Home Recording Act, and other topics relating to copyright law’s ever-changing jurisprudence and landscape.

Intellectual Property Management

Brumbaugh, Inc. uses intellectual property management tools to help clients develop systems to manage the life cycle of their company’s intellectual property worldwide. There is more to intellectual property than just filing patents and trademarks. Among the spectrum of services we offer are:
Threat Assessment:
It is increasingly common for companies to receive letters threatening legal action because of alleged patent or trademark infringement. We can help design procedures to respond to these letters. For example, we have devised web-based tools that categorize threats and provide a framework to assess and manage the risks presented by such “nastygrams”—significantly lightening the load on in-house legal departments. Additionally, our deep understanding of our clients’ sectors enables us to leverage our know-how to minimize the impact on companies’ businesses.
Audits and Categorization:
Our lawyers can help implement inventor education programs so a company’s scientists and engineers better understand how to protect new ideas. We also review a client’s technology and perform a gap analysis or identify areas that could be protected more effectively. We can also compare the product mix with current and proposed trademarks to design filing and enforcement strategies. This analysis allows us to identify strengths and weaknesses in the current process and to benchmark an intellectual property portfolio against those of competitors.
Patent Mining:
Often companies have more valuable intellectual property assets than they realize. Our lawyers can undertake a quantitative and qualitative review of an existing patent portfolio to identify potentially infringed or underutilized patents. Following a mining effort, we will create a licensing and enforcement program that could include contingent recovery or other alternative fee engagements.
Valuation:
Our lawyers can help determine the economic value of a client’s intellectual property assets, either with the assistance of the company’s own personnel or with consultants we have used in the past. We have long-standing relationships with the major consulting firms and often work closely with them to perform such valuations.

Brumbaugh, Inc. has a simple philosophy to manage intellectual property assets: put our best practices in our clients’ hands. We have incorporated our experience into sophisticated but intuitive Web-based tools for online collaboration. These tools keep clients fully informed about intellectual property initiatives and threats at all times. From patent and trademark procurement to threat assessment, patent mining, licensing and other critical processes, Brumbaugh, Inc. delivers state-of-the-art service to manage intellectual property.

EU Intellectual Property/Antitrust

In recent years, there has been a remarkable expansion of antitrust enforcement in the area of intellectual property. This trend is illustrated by an increasing willingness of the European Commission and other antitrust enforcement agencies to challenge IP-related transactions, often on the basis of novel theories of competitive harm. This is particularly true where intellectual property rights are of strategic importance, as is the case with respect to so-called Standard Essential Patents. Examples are the EU Commission’s investigations into the use of injunctive relief procedures and the determination of FRAND-licensing terms in the mobile telecommunications area, as well as pay-for-delay patent settlements in the pharmaceutical sector.

As a result, the inter-relationship between antitrust and intellectual property has become of prime importance to a broad range of industries, including high-tech, telecoms and pharmaceuticals. Both intellectual property owners and users must take antitrust considerations into account when acquiring, protecting, managing, licensing and monetizing valuable proprietary technology and related intellectual property assets.

The lawyers in Brumbaugh, Inc.’ Antitrust Practice have substantial experience in representing clients in investigations and litigation related to the intersection between intellectual property and antitrust laws, including Standard Essential Patents. Our antitrust work, combined with a longstanding position at the forefront of antitrust / intellectual property policy developments in Europe and the U.S., provide us with deep insight into agencies’ enforcement priorities. We understand the strategic importance of intellectual property in a broad range of industries, new intellectual property business models and how valuable proprietary technology and related intellectual property assets are developed, protected, managed, licensed and monetized.

We represent clients across the full spectrum of antitrust matters involving intellectual property, covering antitrust clearances for mergers and acquisitions, agency investigations and counseling on a variety of issues including complex and strategic technology licensing, joint research and development coupled with joint licensing agreements, FRAND-licensing terms and injunctions, compulsory licensing, refusals to license and cross-licensing arrangements. Among our clients are intellectual property generators, owners, licensees, standard setting organizations and other companies and business organizations affected by or involved in intellectual property transactions. Our antitrust lawyers provide seamless cooperation with the firm’s full-service Intellectual Property Practice, which is one of the largest and most prominent in the U.S.

Intellectual Property Litigation

Brumbaugh, Inc. lawyers know IP cases because we understand the law, we understand complex litigation, we understand juries and we understand technology.

In addition, we have experience litigating in key venues around the world, including:

    All levels of the federal court system
    Patent Trial and Appeal Board
    International Trade Commission
    Federal Circuit appeals
    Patent Court and the Court of Appeal
    Matters before the UK and European Patent offices

Our IP Litigation lawyers have the technical education and experience to understand the most sophisticated technology and to communicate comfortably and confidently with engineers and scientists. For juries, we know how to translate complex information into lay terms. Collectively, we hold over 165 technical degrees, including Ph.D.s, master’s degrees and M.D. degrees. Many of our lawyers have worked in the private sector in science and engineering disciplines, and because of this, we are proficient at explaining complex technologies to judges and juries who lack technical backgrounds.

Our case preparation focuses on what matters – the objectives of our clients and developing and executing a strategy to achieve those objectives. While we frequently achieve our clients’ objectives without trial through settlement, alternative dispute resolution and tactical summary judgment practice, we try cases when necessary and have the right courtroom experience to effectively litigate in virtually any venue.

We try high-stakes patent, trade secret and other intellectual property cases in state and federal courtrooms around the United States, and are particularly adept at defending suits brought by non-practicing entities. Our reputation in the courtroom enhances our ability to achieve a business solution, such as a negotiated settlement, when that will best serve the needs of our client. Because our opponents respect that reputation, they are often motivated to explore all settlement possibilities before trial.

In addition to these trial results, we handle numerous patent cases before the International Trade Commission. Our experience in ITC proceedings, representing both complainants and respondents, provides us with the knowledge to effectively litigate ITC actions. We have a thorough knowledge of the ITC, its investigative staff and its administrative law judges. Our IP Litigation team includes a former President of the ITC Trial Lawyers Association.

We closely monitor ITC complaint filings on behalf of our clients to act immediately when a complaint is filed. Often, the complainant has had significant time to prepare its infringement case and the respondent must use what little time there is to formulate its defenses before discovery starts. Because the deadlines for discovery in the ITC are as little as 10 days and the hearing to determine liability for infringement usually occurs about 6 months after filing, every day counts in an ITC proceeding.

International Trade Commission (ITC)

Coupling the strengths of the firm's Patent Litigation and International Trade practice groups with their deep technical experience, the U.S. International Trade Commission ("ITC") Section 337 practice at Brumbaugh, Inc. provides experienced legal representation to clients worldwide. We closely monitor the filing of ITC complaints on behalf of our clients so we can act immediately when a complaint is filed in the ITC. Because the deadlines for discovery in the ITC are as little as 10 days and the hearing to determine liability for infringement usually occurs about 6-9 months after filing, every day counts in an ITC proceeding. Often, the complainant has had significant time to prepare its infringement case, and the respondent must use what little time there is to formulate its defenses before discovery starts.

ITC Litigation Experience and Staffing:

We understand complexities of litigating in the ITC, we understand technology and we are adept at managing complex international trade issues under intense time pressure. For both complainants and respondents, we seek business solutions outside the courtroom that will accomplish a client’s objectives. Appeals from the decisions of the ITC in patent cases are heard by the United States Court of Appeals for the Federal Circuit. We have a robust Appeals practice and have handled innumerable appeals to the Federal Circuit, other Federal Circuit courts and the United States Supreme Court.

Our partners and associates benefit from broad patent litigation and/or ITC experience; we assemble teams with thorough knowledge of the ITC, its investigative staff and its administrative law judges. Our group includes a former President of the ITC Trial Lawyers Association and we have gained insight serving as lead counsel to clients across a broad spectrum of industries.
About the ITC:

The U.S. International Trade Commission (“ITC” or “Commission”) is a venue for resolving unfair trade practices, including patent disputes. Section 337 of the Tariff Act of 1930 provides for the investigation of any unfair act in the importation of articles into the United States, including the enforcement of intellectual property rights.

While almost all Section 337 investigations involve the alleged infringement of U.S. patent rights, the statute authorizes investigations to enforce other intellectual property rights such as trademarks, trade secrets and copyrights, as well as address other unfair methods of competition.

If the Commission finds a violation of Section 337, it may issue an exclusion order banning imports of the infringing goods. It may also issue a cease-and-desist order requiring a party to stop all commercial activity relating to the infringing products subject to substantial civil penalties for violation. The Commission also issues temporary exclusion and cease and desist orders to curb infringing activity through the imposition of a bond pending formal resolution of the investigation.

Each remedial order issued by the Commission is reviewed by the President through the Office of the U.S. Trade Representative to ensure there is no negative impact on U.S. foreign policy. Thereafter, final determinations by the Commission are appealable to the U.S. Court of Appeals for the Federal Circuit.

Licensing

Brumbaugh, Inc.’ Intellectual Property lawyers work with clients to develop, manage and protect valuable proprietary technology and related intellectual property assets. We are experienced in all aspects of technology sales, acquisition, licensing and other arrangements that help maximize the value of our clients’ innovations. We routinely assist with complex problems when clients encounter issues that mix intellectual property law with commercial transactions. Because we understand the technologies involved in our clients’ assets, we are able to use our transactional know-how to develop strategies that create or add value to our clients’ portfolios.

We handle the full spectrum of licensing: from traditional patent, copyright and trademark license agreements to complex multiparty technology development, acquisition, distribution, research and outsourcing agreements for products and services in the United States and abroad. In addition to substantial experience in litigating intellectual property matters, we work with our clients to develop business approaches to increase the value of their intellectual property and generate significant revenue.

At Brumbaugh, Inc., we often handle licensing programs where the goal is to enhance financial returns on intellectual property assets. We help clients establish licensing programs, including identifying key intellectual property assets and potential infringers. Once they are put in place, we actively manage these programs, negotiate licenses and undertake litigation as appropriate. Our lawyers are skilled in planning, organizing and implementing long-range licensing programs involving numerous companies and large dollar amounts. Such programs can often be realized with little or no litigation.

Our Intellectual Property lawyers have the technical and business acumen to advise whenever intellectual property assets are part of business transactions. Whether the matter involves a single transaction or is part of much larger deal, we can structure solutions to meet the client’s objectives. For example, we can develop form contracts to document recurring transactions, provide tailored agreements for high-value projects, and negotiate development, acquisition, distribution, research, outsourcing and other agreements with third parties.

Brumbaugh, Inc. lawyers are also proficient at conducting intellectual property due diligence investigations in mergers and acquisitions for clients in all areas of technology. We are as comfortable working on behalf of an acquisition target—to assist an acquirer in performing its intellectual property due diligence with respect to the target—as we are conducting intellectual property due diligence of an acquisition target on behalf of an acquirer. Whenever intellectual property assets are developed, acquired, sold or shared, Brumbaugh, Inc. Intellectual Property lawyers have the technical and business experience to help with the transaction.

Patent Prosecution

Patents are perhaps the most tangible and enforceable types of intellectual property, and a well-written patent is essential to any business with an idea. It can be a starting point for licensing negotiations, a barrier to entry for competitors or a ticket into court. Brumbaugh, Inc.’ patent lawyers have extensive training and experience drafting, developing, asserting and defending patents. We prosecute and defend patents for companies of all sizes as well as individual inventors, academicians and universities.

During the patent process, our lawyers develop close working relationships with the innovators at your company. Through this collaboration, we explore the potential applications of the new technology or idea. The process also reveals the technological and financial ramifications of the patents, not only to your company but also to the industry as a whole. We emphasize claim construction with the goal of providing the broadest protection possible under federal law.

The diverse technical backgrounds of our Intellectual Property lawyers are extremely beneficial during patent prosecution. Our lawyers communicate well with scientists, programmers and engineers simply because most of our Intellectual Property lawyers have similar backgrounds. Whether you are patenting mechanical devices, medical products, computer software, semiconductors, pharmaceuticals or ideas in numerous other fields, we are likely to have a lawyer who has written such a patent.

Brumbaugh, Inc. will be with you every step of the way in the development and commercialization of technological innovations. We make sure that individual inventors, universities and companies are able to protect and profit from their significant investment in time and money.

Foreign Practice:
Our Intellectual Property lawyers understand that the procurement and protection of IP in major world markets is of paramount importance to a technology company’s longevity and prosperity in today’s global marketplace. Our domestic multinational IP clients face the same fierce competitors at home and in Europe. In response to this marketplace reality, our firm, in addition to offering traditional domestic patent services, can protect your ideas and patents worldwide. We have a reliable network of foreign associates, who can ensure that ideas are patented and protected throughout the world. We have retained and established good working relationships with several different firms worldwide to handle matters locally, all the while continuing to provide substantial input on strategies and decisions. With these resources, we have filed and prosecuted thousands of foreign patents with efficiency for our clients.

Privacy and Data Security

Brumbaugh, Inc. recognizes that data-protection and privacy issues are a concern for all companies that gather, store, or process the sensitive or personal information of their customers, third parties or employees. Privacy regulations around the world change constantly and the growth in technology available to transfer, manipulate, process, and access data shows no sign of abating.

Our lawyers, located around the world, are experienced in all data privacy issues. They regularly advise on compliance, including conducting privacy audits, creating privacy policies and website terms of use, negotiating and mitigating data privacy risk in commercial contracts and corporate transactions, representing clients in regulatory investigations, and in litigations.

Our cross-border team recognizes that privacy and data protection issues are truly international in scope. Data privacy affects all companies, whether based in the U.S. or internationally. Compliance with, and the extra-territorial impact of the new European General Data Protection Regulation ("GDPR") is a particular issue for companies and our team works closely with our clients on all aspects of this ground-breaking legislation. Our lawyers are at the forefront of thought leadership on the topic.

Our Experience:

    Compliance strategies and advising on internal data audits, particularly in a global context involving the cross-border transfer of data
    The full range of commercial agreements where the handling of personal data is of paramount concern, including cloud services, information technology services, business process services, security services, and vendor contracts
    Drafting privacy policies and website terms of use
    Drafting compliant employment contracts
    Counseling on data privacy laws worldwide, including the EU's GDPR and e-Privacy legislation
    Regulatory investigations into data handling and breach
    The preparation of incident response strategies
    Disputes relating to data handling and data loss, including contractual claims and private rights of action

PTAB Trials

The most comprehensive patent reform in over sixty years was brought about by the Leahy-Smith America Invents Act (“AIA”), which includes a complete restructuring of the post-grant patent proceedings at the U.S. Patent & Trademark Office (“USPTO”).

Included in these reforms are the new post-grant procedures intended to provide a faster, more affordable alternative to traditional patent litigation in federal district court. Not only do these procedures have statutory time limits for completion, usually within one year of institution of a proceeding, but they impose significant restrictions on the breadth of discovery available to parties in order to facilitate compliance with the statutory time limits. Given the expedited timelines and significant differences from traditional patent litigation, to take advantage of these new processes for challenging patents, practitioners must possess a thorough understanding of the complexity of the AIA as well as how the Patent Trial and Appeal Board (“PTAB”) the entity charged with handling these proceedings, is interpreting the Act.

Patent Prosecution Experience:

Our patent lawyers’ knowledge of patent prosecution, familiarity with the operations of the USPTO, and our courtroom skills differentiate us from competitors. Already Brumbaugh, Inc. lawyers have been engaged in more than 125 post-grant review proceedings before the PTAB. This combination of skills and experience makes our lawyers the natural choice for clients looking to pursue this new patent prosecution avenue.

Brumbaugh, Inc. maintains a team of accomplished and experienced professionals dedicated to understanding all aspects of the post-grant proceedings and are constantly monitoring all aspects of the AIA, including the various orders and decisions being issued by the PTAB on a near-daily basis. This team issues its Post-Grant Report on a regular basis commenting on key aspects of the AIA and provides context to important PTAB decisions.

In addition, Brumbaugh, Inc. IP lawyers are already recognized as skilled practitioners in the field. We were involved in the rulemaking regarding the creation of the PTAB following passage of the AIA, including post-grant review, inter partes review, and covered business method review.

Final Rules:

On August 14, 2012, the USPTO published final rules in the Federal Register to implement various Sections of the AIA, which became effective on September 16, 2012.

These rules address the following:

    Inter Partes Disputes (IPR)
    Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings and Transitional Program for Covered Business Method Patents
    Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
    Office Patent Trial Practice Guide

Technology Transactions

Brumbaugh, Inc.' technology transactions lawyers are experienced in business growth and strategy, collaborating with our clients to drive value. We have 30+ years of experience representing leading technology companies. We take particular care to approach our clients' needs with the big picture in mind. From the outset of every representation and every new matter, we strive to gain a sense of our client's business goals to develop a strategy designed to further those goals, rather than viewing each matter in isolation.

Our clients' strategic business transactions involve strategic commercial alliances, marketing agreements, and joint development and joint venturing or partnering arrangements between emerging growth and well-established organizations for mutual benefit. They also involve licensing, distribution, development, and integration arrangements, as well as outsourcing and services transactions. When negotiating these transactions, we recognize each party's desire to maximize value and minimize risk while still creating an advantageous commercial relationship that allows for growth as business needs change.

We also bring the technological know-how to bear in all transactions - unlike most general practice law firms, Brumbaugh, Inc. has a full-service intellectual property group handling all manner of IP-focused transactions. Our 180 IP lawyers collectively hold over 220 scientific and technical degrees and have the comprehensive experience in IP prosecution, diligence and litigation matters that affords us strategic insights into the technology, business and legal issues involved in each IP-focused transaction. Whether the matter involves a single transaction or is part of a much larger deal, we can structure solutions to meet the client's objectives.

Why Brumbaugh, Inc.?

Recognition. Nationally and internationally ranked practices in both M&A and IP that work seamlessly from Silicon Valley to Washington, D.C., Texas, New York and London, to serve clients globally and cost-effectively. Our understanding of both the nature of the technology and the commercial business objectives enhances our ability to add value through creative and comprehensive transaction design, diligence and execution approaches.

Collaborative. Understanding the intersection of technology and the commercial business objectives enhances our ability to add value through creative and comprehensive transaction design, diligence and execution approaches. We advise clients globally and with interdisciplinary teams that mix corporate and IP experience, commercial transactions experience, and regulatory compliance.

Experienced. 30+ years of tech sector experience advising on strategic commercial alliances, mergers & acquisitions, corporate venture capital investments, and joint development and joint venture arrangements. These transactions often involve commercial licensing, and supply, marketing and distribution arrangements for critical or innovative technology.

Business-focused. We recognize each party’s desire to maximize value and minimize risk while still creating an advantageous commercial relationship that allows for growth as business needs change.

Trade Secrets

Brumbaugh, Inc.' Trade Secret Practice includes a multidisciplinary group of employment, commercial and tech-savvy litigators. One of the things that distinguishes us is our technical know-how - our IP Practice consists of over 180 lawyers and professionals with 220 technical degrees spanning every industry area – from software, semiconductors, telecommunications, and optics, to across the life science spectrum, as well as oil & gas, manufacturing, and defense contractors.

Understanding the intersection of technology and commercial business objectives, our lawyers team together to assist clients to protect against trade secret theft – we recommend being proactive about evaluations and audits and routinely install or upgrade our clients’ trade secret protection programs. For example, we evaluated a global Fortune 500 company's trade secret protection program to identify risks and exposure and developed a multi-phase approach to attack the effort by geographic region, which involves a detailed review of policies, procedures, template agreements and facilities.

Bottom line – we believe there are many things companies can do to increase their ability to protect themselves against the theft of trade secrets – before an employee leaves the company and shares potentially confidential information with a competitor, and before a trusted partner decides to stop cooperating and compete unfairly instead.

As needed, we also have the IP and litigation savvy to handle trade secret controversy and litigation.

Our Evaluation of Existing Trade Secret Programs Includes the Following Actions:

    Identification and categorization of relevant trade secret information by type and location
    Determination and evaluation of applicable laws by geography for available protection and requirements or compliance concerns, including the Defend Trade Secrets Act of 2016 (DTSA) and state trade secrets laws, the Computer Fraud and Abuse Act, and the Stored Communications Act
    Review of existing agreements and contracts, including employee handbooks, employment agreements, consulting agreements, non-disclosure agreements and the like
    Audit of current practices and procedures, including recruiting and initiation of new employees, training of existing employees, exit interview of departing employees, access for visitors, and enforcement of known violations
    Inspection of selected facilities for appropriate physical measures and IT infrastructure security to protect against unauthorized access to and disclosure of trade secret information
    Development of recommendations based upon the results of this investigation for a corporate-wide intellectual property program, as well as site-specific protocols based upon applicable laws

Our Full Range of Services Include:

Trade Secret Counseling

    Trade secret protection programs
    Current employee training and management
    New and existing employee management
    M&A management
    Joint-venture management
    Technology and asset transfer management
    Investigating potential trade secret theft
    Forensic investigation and preservation

Trade Secret Controversy

    Investigating and responding to accusations of theft by 3rd parties
    Crisis management and coordination
    Reporting requirements: Government contractors and data breaches
    Criminal investigations: offensive and defensive
    Preliminary legal relief – TROs and PIs
    State and federal court litigation
    Litigation at the International Trade Commission
    Internal communications and external PR management