Portfolio Management

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Overview

Patent, trademark, and copyright portfolios are the crown jewels for many companies. They are immensely valuable, difficult to obtain, and worthy of the highest possible level of protection, while also raising a series of critical, complex second-order questions: protect from whom? Where? How? Rothwell Figg’s Portfolio Management team excels at guiding clients through these relevant questions, and arriving at a strong, strategic, and bottom-line oriented plans for protecting these key IP rights.

The foundation of any IP portfolio is strategy – identifying the rights to be protected, and discerning a path that not only minimizes risk and maximizes opportunity, but weighs all of the associated costs and benefits. Portfolio strategy necessarily operates at the intersection of aspiration and resources, and as much as companies would like to protect everything, everywhere, that’s not usually possible or practical. Our first role as advisors and strategists is to focus on prioritizing an array of IP rights and protecting them as effectively as possible.

Choices abound and choosing properly is difficult. We counsel clients on whether to file patent applications (as opposed to relying on other forms of IP protection, such as trade secret). We consider where it is best to file trademark or design applications (as opposed to identifying those instances where reliance on common law rights is preferable or even the only reasonable alternative). We can consider copyrights and the best way to identify, protect, and even register copyrights, or whether registration is even available or needed (in many countries, it is not). Our opinion services (e.g., validity, availability, and infringement opinions) help our clients prioritize which of their IP rights they may be able to assert. We offer guidance on the increasingly critical topic of patent subject matter eligibility, and are conversant in cutting-edge technologies that may implicate it, such as artificial intelligence and machine learning. We also advise on the difficult and complicated issues of global sales and availability via websites and social media, and availability for use and reservation of rights in marks in countries around the world, taking into account meanings in foreign languages, connotations, and availability of words and graphics.

Our attorneys have extensive experience in securing registered patent, trademark, and copyright protection. Managing a portfolio of IP rights also means asking how to secure ownership of a portfolio of rights which were newly acquired from a purchase, merger, or other acquisitions. Drawing on our experience in portfolio management, we help our clients understand how to enforce or license their current portfolio, how to respond to a competitor’s portfolio (Licensing? Design around? Another approach?), or how to respond to a competitor’s uses and registration. We are confident that our ability to provide targeted, efficient recommendations remains unrivaled.

As practitioners, we subscribe to a hands-on, personal philosophy of IP law. This means taking the time and making the effort to develop a comprehensive understanding of the client’s enterprise as a whole. We endeavor to understand the reasons for protecting proprietary technology – to protect a commercial market, licensing, to create company value for a potential acquirer – and counsel the client accordingly. We research their technology, business issues and competitive strategy, budgetary constraints, commercial, technical, and legal needs and priorities, and much more. Our deep well of experience allows us to work closely from the very first days that a name or mark is being chosen to identify whether it is a good candidate for legal protection, and if so, how and where to protect it – and at what cost. We can help clients develop a streamlined and cost effective program of copyright rights, and identify where copyright protection is worthwhile not only for our media and entertainment clients, but for all companies who create everyday content in the form of websites, or selling materials – even packaging. 

The Rothwell Figg team brings a personal perspective and a practical, realistic, and goal-oriented approach. This approach succeeds for our clients because our attorneys have earned their trust by being consistent, highly responsive, and knowledgeable. Many clients have been with us for several decades, and have come to rely on a kind of continuity and judgment that we believe few firms are able to deliver.

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