Intellectual Property Law and Litigation

The Intellectual Property Law Practice Group of Frost Brown Todd is composed of over 40 professionals, including registered patent attorneys, patent agents and paralegals. The group has individuals who specialize in the areas of patents, trademarks, copyrights, trade secrets, interactive media, advertising, and first amendment and media. We are a full-service intellectual property law practice, providing clients with counseling, prosecution, licensing, litigation, and portfolio management services. Because many of our lawyers have previous in-house experience and several have advanced technical degrees, we excel at providing advice which focuses on the business needs of our clients. We have a strong practice in the life sciences industry, and are home to the Patent Baristas weblog, a well-known commentary on life sciences patent issues (Stephen Albainy-Jenei oversees that blog). We also provide our clients with cutting-edge advice in the fast-developing arena of interactive media, domain name disputes, and copyright law.

Recognized Success and Experience in Intellectual Property Law

We have been recognized as one of the top patent practices in the region (2007 and 2008 Chambers USA Business Lawyers Guide). The group includes registered patent practitioners with a wide range of technical backgrounds, including a number with advanced technical degrees. Several of our lawyers have been recognized in such publications as Chambers USA, Best Lawyers in America, and Ohio Super Lawyers, as top practitioners in their field. Intellectual property law practice has been a core practice of Frost Brown Todd for over 30 years, which is quite unusual for a general practice firm. Our practice is well integrated into the firm’s related practice areas, including the corporate and international practices, giving our clients the benefit of a broad perspective in the protection of our clients’ intellectual property assets.

The Intellectual Property Practice Group represents a broad range of patent clients, both large and small, including AK Steel, ThyssenKrupp Elevator, Cintas, Cincinnati Bell, Convergys, Mylan Pharmaceuticals, Meridian Bioscience, Ethicon Endo-Surgery, Johnson & Johnson, totes Isotoner Corp., Kao Brands (the former Andrew Jergens Company), Chiquita Brands, ACH Food Companies, Sunny Delight Beverages, Perfetti-Van Melle, Scripps Networks Interactive and Wild Flavors. Our clients include universities, research hospitals and research institutes, as well as companies ranging from Fortune 100 to start-ups.

It is of special significance that several of our attorneys have in-house legal experience; that background allows us to understand the legal, business and budget issues which our clients face and we bring that experience to the legal advice we provide. The practice group is chaired by Ann Schoen, formerly in-house patent counsel at GE, and vice-chaired by Steven Goldstein, formerly a patent attorney at P&G for 19 years, ultimately serving as Associate General Counsel – Patents and World Patent Coordinator for Beauty Care. Clients report to us that they find particular value in our Intellectual Property attorneys’ in-house counsel and corporate experience. This experience benefits our clients as we share a common understanding of the legal, business and budgeting and process efficiency issues that clients face every day. We pride ourselves on being able to bring that corporate experience to the legal advice we provide.

Patent Prosecution and Counseling

From patent prosecution, training and counseling, to due diligence, licensing and litigation, our patent attorneys have extensive experience in all areas. We routinely assist clients with:

• Cost effective and business-oriented patent portfolio management;
• Conducting and analyzing patentability, validity and freedom to practice searches and providing related legal opinions;
• Filing and prosecuting U.S. patent applications;
• Building and maintaining international patent portfolios through an established, efficient and reliable network of foreign patent associates;
• Developing and conducting patent training programs for in-house technical personnel;
• Developing and implementing cost effective corporate patent filing, maintenance protection policies and in-house procedures;
• Assist clients with setting and meeting budget expectations for research and design and patent protection and maintenance matters;
• Policing patent activities and filings of our clients’ competition;
• Conducting comprehensive intellectual property audits and assisting with intellectual property aspects of due diligence inquiries;
• Negotiating and drafting license agreements; and
• Investigating and litigating patent infringement claims.

FBT attorneys have extensive experience in patent prosecution and counseling. This includes patentability evaluation of new inventions, and the design and execution of patent strategies to protect those inventions in both the U.S. and internationally. FBT works with many of its clients to evaluate and develop freedom-to-practice positions on consumer products. Examples of recent projects in these areas include:

• Managed large patent portfolios to cost-effectively advance clients' business goals for several of our clients;
• Won an opposition decision in the European Patent Office upholding a client’s commercially important medical device patent;
• Managed the patent aspects of an IPO for a start-up medical device company;
• Worked with numerous companies to develop non-infringement and patent invalidity positions relating to its products; and
• Developed an in-house training program on protecting patent and trade secret assets for several of our clients.

In addition to prosecution and counseling, FBT attorneys also have extensive experience in the licensing of patents. We have assisted clients (for example, the University of Cincinnati and Cincinnati Children’s Hospital) license out the technologies they have developed, and have helped our clients (for example, AOI Medical, a start-up medical company, and Chiquita Brands) license in technologies which are critical to their businesses.

Patent Litigation

A hallmark of FBT patent cases is cost-effective staffing and cost management. FBT’s Intellectual Property Department includes several outstanding experienced patent litigators, led by Dave Schmit and Ann Schoen, supported by a group of associates, paralegals and project assistants. Our intellectual property litigation team knows the federal courts well and they have handled cases across the U.S. Recent patent suits include those relating to processed agricultural products, business method patents in the financial services area, aluminized steel, high security locks, automobile parts, high speed sorters, elevators and computer software.

In addition to litigation, our attorneys have extensive experience in developing non-infringement and invalidity positions to support our clients in the development and marketing of their products. Where an infringement issue is identified, our attorneys often assist our clients in developing non-infringing products.

Trademarks and Copyrights

Frost Brown Todd’s trademark and copyright attorneys form one of the region’s most experienced trademark, copyright and internet law groups. Uniquely, each member of the group focuses his or her practice exclusively on trademark, copyright, or internet law and related issues. We represent clients such as Sunny Delight Beverages Co., The E.W. Scripps Company, Scripps Networks Interactive, National Association of Professional Baseball Leagues (minor league baseball), ACH Food Companies, Perfetti-Van Melle, Wild Flavors, Western & Southern, and The Ohio State University for all types of trademark and unfair competition matters.

Our attorneys have a wealth of experience in helping clients both protect their major brands and leverage them into new product and service areas. By understanding and focusing on the goals of our client’s business and the possibilities for expansion, we analyze our searches and offer advice not only based on what the brand currently is, but on what it may become. In doing so, we help clients avoid future headaches with extending brands into new areas.

Scope of Trademark and Copyright Services

From trademark selection and clearance, to due diligence, licensing and litigation, our trademark attorneys have extensive experience in all areas. We routinely assist clients with:

• Conducting and analyzing trademark searches and providing clearance opinions;
• Filing and prosecuting U.S. trademark applications;
• Handling internet-related issues, including domain name disputes and the unauthorized use of intellectual property on sites like E-Bay and YouTube;
• Building and maintaining foreign portfolios through an established and reliable network of foreign associates;
• Reviewing marketing materials and packaging for trademark issues;
• Policing brands on a world-wide basis through the use of watch services, customs registrations and foreign associates and investigators who coordinate raids and legal actions for infringements with local authorities;
• Negotiating and drafting license agreements;
• Prosecuting and defending proceedings before the Trademark Trial and Appeal Board; and
• Investigating and litigating unfair competition, copyright and trademark infringement claims.

Profit from Intellectual Property Licenses

Our attorneys regularly represent licensors and licensees in negotiating agreements for commercialization of intellectual property. We can help a client profit from the equity held in its brands and intellectual property, and help build the value of its products/services by negotiating uses of intellectual property assets.

International Experience and Connections

The Intellectual Property Department possesses a wealth of substantive international prosecution and enforcement experience. The group assists several clients, such as Chiquita Brands, AK Steel, Convergys, totes Isotoner Corporation, ACH Food Companies and Scripps Networks Interactive, with international intellectual property matters, including patent and trademark protection, copyright protection, customs enforcement, acquisitions, joint ventures and licensing activities. The group is not only experienced in international intellectual property law, but also works closely with local counsel and local courts. Indeed, our Intellectual Property Department has long-established relationships with intellectual property counsel in every major U.S. market and virtually every country around the world.

In addition, Steven Goldstein received his international patent training at the University of Strasbourg and by practicing in Brussels, Belgium at Procter & Gamble’s European Technical Center. Steven served as international patent coordinator for the company’s beauty and personal care products. Steven had significant responsibility for instituting The Procter & Gamble Company’s (“P&G”) ground-breaking efforts at economical international patent portfolio management. We have implemented patent portfolio management systems for several FBT clients, including AK Steel Corporation and ThyssenKrupp. Finally, as a member of the United States Law Firm Group, a national network of 19 established U.S. law firms, and MultiLaw, a multinational association of independent law firms, our attorneys and clients have ready access to ideas and support from outstanding national and international legal networks.

Internet and Interactive Media

In the fast-paced, global scope of modern media and communications business, our lawyers are at the forefront in assisting our clients in managing, protecting and monetizing interactive internet and user generated content. A broad range of new techniques for publishing and broadcasting content are emerging, including reader posted comments, forums, blogs and user generated photographs and videos. These newsgathering and content generating advances are inevitably raising new legal questions and issues, and our lawyers are assisting, advising and counseling our clients in this rapidly developing area.

Advertising, Marketing and Media

The business of advertising, marketing and media remains fast-paced, wide-open and controversial. It is an industry that, by its very nature, must constantly evolve and adapt to technological advancements and cultural changes. Advertisers often walk a fine line between what is timely and effective for their product or services and what crosses the line in the context of conflicting federal, state and local rules. Businesses that advertise require legal counsel with vast experience in the industry – lawyers who can scrutinize and anticipate advertising issues, and respond quickly and thoroughly.

Clients turn to Frost Brown Todd for the day-to-day review of advertising and promotional campaigns from the conceptual stage through production, publication and distribution. Our lawyers are adept and knowledgeable – with a vast amount of experience counseling clients in a wide variety of industries and litigating cases spanning jurisdictions and issues.

Our lawyers act as members of many creative teams, helping clients keep their advertising and marketing within legal boundaries. We identify for clients in a timely manner the areas of concern to assist them in evaluating the level of risk they are comfortable taking on for any particular campaign. Our lawyers succeed by not only giving practical advice, but solutions to problems which are grounded in the business realities and competitive environment faced by our clients.

We also counsel clients on the risks inherent in their relationships with third party vendors, Internet and on-line developers and service providers, production companies, media, talent, performers’ unions, insurers, and employees, as well as matters governing the relationship between advertising agencies and advertisers.  We are experienced in handling all facets relating to advertising, marketing and media, including:

• Pre-publication and pre-broadcast review of advertising copy
• Reviewing marketing programs, ideas and concepts
• Evaluating claim substantiation and structuring surveys
• Drafting privacy policies, user agreements and terms of use for websites
• Reviewing email and other interactive/viral advertising and marketing campaigns
• Structuring websites to allow user-generated content in a way to most effectively protect the advertiser and/or website operator
• Educating advertisers on guidelines for developing internet-based marketing programs and advertising
• Reviewing sweepstakes, game and contest rules of all sorts
• Initiating and defending false advertising claims and claims substantiation
• Reviewing labeling and product packaging
• Negotiating and advising on advertising representation agreements
• Searching product names, taglines and the like for trademark purposes
• Registering trademark rights to names, taglines and the like
• Negotiating and advising on marketing, media and licensing agreements

Representative Clients

• Cincinnati Bell (Telecommunications, Internet services)
• Northlich (Advertising agency; various food clients)
• WonderGroup (Advertising agency; various food clients)
• Healthy Advice Networks (Medical/health advertising)
• Sunny Delight Beverages Co. (Beverages)
• Perfetti van Melle USA (Candy, fruit treats)
• ACH Food Cos. (Food products)
• Creatives on Call (Advertising agency)
• The E.W. Scripps Company (Multi-media conglomerate)
  • Newspaper Group
  • Television Stations
  • United Media (Licensing & Syndication)
  • Scripps Howard News Service
• Scripps Networks Interactive (Food Network, HGTV, Shopzilla, etc.)
• Valmont Industries, Inc. (Utility, Infrastructure and Irrigation products)
• Luxottica Group (eyeglasses)
• Marathon Oil Corporation (gasoline)
• The ServiceMaster Company (home lawn care service)
• Gutter Covers International, Inc. (residential and commercial gutter covers)