Intellectual Property

The Intellectual Property Group undertakes responsibility for the protection of inventions and other forms of intellectual property for clients ranging from start-ups to Fortune 500 companies. We obtain, defend and enforce patents, trademarks and copyrights in the United States and throughout the world. The Firm has developed relationships with intellectual property lawyers in many major foreign countries, and has facilitated applications, patents and registrations of trademarks in over 80 foreign jurisdictions.

Our attorneys have established a reputation for practical, common-sense business approaches to client concerns, as well as sophistication in dealing with a range of intellectual property issues for firms of all sizes. We have broad experience in patent representation, trademark disputes and branding concerns for our clients whether an emerging company or a Fortune 500. We help our clients manage their intellectual property assets as an integral part of a comprehensive business and competition strategy. Our attorneys are experienced in formulating overall intellectual property strategy, including substantive analysis and recommendations for branding protection of intellectual property interests. Our work includes branding audits for clients as well as brand protection work for international companies, including name dispute proceedings. We are able to offer strategy for resolving difficult freedom-to-operate obstacles, negotiating licensing agreements, and effectively utilizing existing intellectual property portfolio to strengthen client's competitive positions. Our attorneys also have handled several hundred complex intellectual property litigation matters in numerous jurisdictions in the United States and overseas, as well as before the U.S. International Trade Commission.

The Group's attorneys are experienced in mechanical, electrical, chemical and biochemical technologies. We have secured patents in a broad array of technologies, products and services, including industrial processes and equipment; chemical compositions and processes; biomedical and chemical technologies, including peptide transporters, DNA sequences, pharmaceutical compositions and methods, stem cells, medical therapies for treatments of diseases, medical research tools and devices; electronic circuits and devices; ceiling fans, electronic programmable thermostats, lighting fixtures and optical devices; packaging and related components; rehabilitation and mobility apparatus; control systems for processes and equipment; telecommunications systems and products; electric transmission and distribution apparatus; computer hardware and software; ecommerce applications and business methods; fishing products; beverages; textiles; financial and banking services; and various consumer products.

Biotechnology, Pharmaceuticals, and Medical Devices

The Intellectual Property Group has a core group devoted solely to this industry, with experience representing clients in matters related to medical systems, medical devices, chemical, biotechnological, and pharmaceutical patents. This includes fermentation and extraction of proteins, food additives and processes, small molecule pharmaceuticals, metallurgy, packaging materials, electronic materials and associated methods of manufacture and use, electrolysis, as well as polymeric processes and applications. In the biotechnology field, in particular, this includes immunology, gene therapy, genomics, bioinformatics, plant biotechnology, fermentation, cancer therapy, small molecule pharmaceuticals, and biotechnology research tools.

Intellectual Property Services for the Energy Industry

Our attorneys have hands-on experience in the energy industry and have worked with some of the world's largest oil companies and service companies in patent matters which include geomechanical modeling, drill bit design, well injectivity analysis, "smart well implementation," maritime vessel designs, downhole production tools and methods, offshore drilling tools - just to name a few. Baker Donelson attorneys understand the issues from the client's perspective, having worked in the industry as engineers and consultants.

Representative Matters

• Secured portfolio of U.S. and foreign patents for startup drug-testing company that is now the exclusive testing facility for three state governments.
• Obtained patent for biosensors comprising a covalently attached monomolecular biological conjugate layer and a transducing device.
• Obtained patent for process for decellularizing soft-tissue engineered medical implants, and decellularized soft-tissue medical implants produced.
• Obtained patent for transplantable recellularized and reendothelialized vascular tissue graft.
• Obtained patent for pharmaceutical composition for treating angiocardiopathy and the method of producing thereof.
• Obtained patent for intraocular multifocal lens.
• Obtained patent for use of high frequency ultrasound imaging to detect and monitor the process of apoptosis in living tissues, ex-vivo tissues and cell-culture.
• Prosecuted patent application directed to optical sensor based on surface electromagnetic wave resonance in photonic band gap materials.
• Prosecuted patent applications directed to surgical instruments and method for corneal reformation.
• Prosecuted patent application directed to RFID-based system and method for tracking patient flow.
• Prosecuted patent application directed to system and method for human gait analysis.
• Prosecuted patent application for provisional percutaneous pedicle markers and methods of use thereof in spinal implants.
• Successfully invalidated patent by proving the claimed tool did not work as represented to the patent office or in the patent itself and obtained costs for defendant accused of infringement.
• Obtained product exclusion order from the United States International Trade Commission (ITC) against foreign and domestic companies importing into the United States products that infringed two U.S. patents of the client.
• Obtained consent judgment and withdrawal of trademark application by defendant in trademark and trade dress infringement action relating to 4 x 4 truck tires.
• Obtained trademark registrations for client's scent-emitting products and obtained patent coverage directed to company's primary product.
• Prepared and prosecuted patent applications directed to video imaging devices used in police vehicles.
• Successfully argued and won reversal on appeal of copyright infringement claim brought against client publishing a directory of factual information about cable systems throughout the country.
• Secured portfolio of U.S. and foreign patents for a start-up manufacturer of flexible containers that has secured production contracts with a major international foods company.
• Secured portfolio of U.S. patents for start-up manufacturer of asbestos abatement products that now has annual sales in excess of $25 million.
• Secured important U.S. patent directed to packing for high temperature, high pressure valves.
• Prosecuted U.S. patents for corrugated paperboard containers providing increased shipping and handling protection for products, including containers for outboard motors.
• Successfully enjoined competitor from copying designs of commercial refrigeration parts embodying trade dress of client.
• Successfully enjoined competitor from copying consumer packaging designs embodying trade dress of client.
• Defended and prosecuted trademark registrations and oppositions at the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, including oppositions concerning trade dress for thermoformed consumer food packaging products, concerning trademark for tobacco products, and concerning trademark for beverage for dogs.
• Successfully litigated domain name registrations that infringed clients' marks.
• Enjoined infringing use of client's trademark and trade dress for firearms.
• Prepared and prosecuted patent applications for apparatus and method for earth-retaining walls made of cementitious blocks and soil reinforcement sheets.
• Obtained patent coverage directed to small aperture sheets for stabilization of earthen slopes.
• Successfully defended foundation against copyright infringement, RICO, fraud and implied trust claims concerning rights of alleged visionary to publications and assets of nonprofit organization.
• Obtained monetary relief from defendant in patent infringement action concerning improved template technology for "instant-photo"-type cameras.
• Handled patent infringement action concerning apparatus for dispensing checks, money orders and other negotiable instruments.

Representative Clients

American Contract Bridge Company Arcade Marketing, Inc. Arre Industries, Inc. Bayer AG Casablanca Fan Company Chattanooga Orthopaedic Group First Tennessee Bank Frontier National Corporation Gordon Biersch Brewery Hunter Fan Company

Life Care Centers of America Mid-South Milling Company Morgan Keegan & Company North American Container Corporation Regal King Rexel, Inc. Stewart Water Solutions Thiele Kaolin Company