Research Institutions Specialty Areas

For more than 30 years, since before the passage of the Bayh-Dole Act, Quarles & Brady LLP has specialized in the intellectual property needs of universities, foundations, hospitals and other research institutions.

Patents. We counsel clients at every stage within the life cycle of a patent, from disclosure through issuance, maintenance and licensing to enforcement of intellectual property. We are well-versed in managing inventorship disputes that are unique to collaborations between investigators at different institutions. We understand the complex technical disclosures we receive from academic laboratories. We understand the special time pressures of academic publishing and grant writing and strive to collaborate with the academic inventors by respecting their deadlines and time commitments. We also well-informed about the organizational issues involved in large patent portfolios for academic staff members who may not be permanently placed at the institution.

Our patent professionals have solid credentials in the relevant disciplines. Many of our patent attorneys and patent agents hold advanced science and engineering degrees. We work closely with our clients, the United States Patent and Trademark Office and foreign counsel to obtain claims that provide comprehensive protection and considerable flexibility as quickly as possible. Claims are prepared and prosecuted with an eye towards licensing. We are also well-versed in supervising foreign patent counsel to maximize the value of a global patent portfolio.

Moreover, we have experience in virtually all of the technical disciplines needed to provide a complete range of services to clients in biotechnology, medical technology, pharmaceuticals, electronics, computers, chemistry, manufacturing and general industry.

We have a number of subspecialties within our team of dedicated attorneys and patent professionals. For example, in 2001, in our role as patent counsel to the Wisconsin Alumni Research Foundation (“WARF”), Quarles & Brady wrote and obtained the broad basic patents on Dr. James Thomson’s groundbreaking research on primate and human embryonic stem cells. We have continued to work in the area of stem cell differentiation and have a large team of attorneys that focus on this subspecialty. Another such subspecialty is in the area of medical imaging. For example, since the early 1980’s, Quarles & Brady has been involved with drafting, prosecuting and licensing patents related to medical imaging for technology transfer offices.

Licensing. Not only do we understand the technical and patentability aspects of technology transfer related to a broad range of technologies, we have developed strategies to aid technology transfer offices in successful licensing programs. For example, in the medical imaging area, we developed strategies to increase the returns when licensing technologies to the oligopoly controlling the manufacture and sale of the major medical imaging modalities. We have experience with the terms and negotiations related to master research agreements, sponsored research agreements, and licensing agreements. Furthermore, we have experience in and strategies for handling difficult negotiations that may include the prospect of litigation.

We are well-versed in handling the acquisition, sale and licensing of intellectual property portfolios, large and small. We have experience licensing a variety of patented inventions, unpatented technology, trademarks and copyrighted materials for universities and companies in areas that include engineering disciplines, biotechnology and computer science. In this same regard, we have assisted professors who are entering into publishing agreements for textbooks and other materials. This experience includes drafting license agreements to address rights granted to the federal government pursuant to the Bayh-Dole Act and opining as to the scope of such rights. Additionally, the Technology Group has experience drafting license agreements to address EAR/ITAR and related export control issues, including deemed exports for international technology transfer agreements and domestic software license agreements involving foreign national usage.

Trademarks and Copyrights. Our attorneys at Quarles are experienced at evaluating, establishing, maintaining and aggressively protecting our clients’ brands. We have worked with clients to help establish overall brand strategies, and use and enforcement guidelines so that new trademarks can reach their intended objectives. We have also negotiated publishing agreements, including academic publishing agreements both on behalf of publishers and authors (including universities).

We have a breadth of publishing experience, including representing a prominent private Indiana college in negotiating an assignment of all rights in a series of bestselling nature books from the author and in negotiations with the publisher thereafter, representing leading Chicago-based publishers in all aspects of their publishing business. This includes negotiation of author agreements, rights clearance, sale and purchase of publishing rights, negotiation of licensing of subsidiary rights, enforcement of rights against infringement and defense of defamation actions, and representing a prominent Chicago cultural institution in negotiating publishing agreements for works authored by its faculty. We have also represented a leading global publisher of trade magazines in a variety of copyright, licensing, trademark and related publishing matters. We are also the copyright counsel to a Big Ten university regarding various magazine and book publishing issues, including the effect of the 1996 Uruguay Round Agreements and the Sonny Bono Copyright Term Extension Act on its intended publication of a public domain work of foreign origin.

Our trademark attorneys also evaluate whether a mark is available for our client’s intended use, in a limited market or throughout the world and whether the mark can be protected against infringement by others. We conduct trademark audits for clients to ensure their brands are protected in key markets, both current and future. These audits are particularly important for clients with significant trademark licensing programs. We audit many of our clients’ trademarks on a regular basis as brands, sales strategies and markets change over time. We also manage global trademark portfolios for our clients, from initial and full clearance searches to U.S. trademark registrations, international registrations under the Madrid Protocol and foreign national applications as well as maintenance of these registrations.

Counseling and advice on conflicts are a critical part of trademark portfolio management. This is true not only during the trademark selection and clearance process (as the clearance of a mark is, in essence, litigation analysis on the risks of adopting that mark), but also during the enforcement process to protect the brand against encroachment by competitors and misuse by others.

For more information on our Research Institutions: Intellectual Property Team, please contact Jack Cook at (414) 277-5405 / or your local Quarles & Brady attorney.