Intellectual Property


Intellectual property can be a major source of revenue, but it can also be considerable risk. Infringement and counterfeiting cases have become ubiquitous in today’s global economy. Only naturally, the potential costs in enforcing one’s IP rights or defending against IP claims have increased substantially.


Companies today need counsel that is experienced in providing global IP management and enforcement services in a cost effective manner. Companies also need counsel that is able to either bring or defend against non-practicing entity infringement claims. Woolf & Nachimson, LLP have handled scomplex IP lawsuits involving patent, trademark, trade dress, and copyright infringement, as well as trade secrets across the United States. Woolf & Nachimson, LLP’s approach is to utilize our diverse experience to ensure that our clients’ cases are handled efficiently and cost effectively.

Trademark Litigation:

Woolf & Nachimson, LLP protects its clients’ rights in trademarks and trade dress through investigations, negotiation, enforcement and defense. If necessary, Woolf & Nachimson, LLP is experienced conducting complex trademark litigation involving trademark licensing issues, trademark infringement and counterfeiting, trade dress infringement, trademark dilution and false advertising claims. Because many trademark and trade dress rights issues involve potential irreparable harm, Woolf & Nachimson, LLP will handle, when necessary, preliminary, temporary and permanent relief.
Woolf & Nachimson, LLP’s IP group is also experienced working with and overseeing foreign counsel to efficiently and cost effectively resolve problems across Asia, the Americas, Europe and elsewhere.

Copyright Litigation:

Woolf & Nachimson, LLP enforce and defend clients in copyright litigations involving technology, media and entertainment industries. Relying on its international and domestic copyright practice, which secures copyright registrations throughout the world, Woolf & Nachimson, LLP handles development, licensing and product distribution




Woolf & Nachimson, LLP’s IP attorneys have obtained copyright registrations in a variety of fields and are experienced in working with and overseeing foreign associates to obtain copyright registrations, enforce and defend copyright claims when necessary. Our lawyers counsel clients regarding the registration, licensing, policing and enforcement of their copyright rights.

Trademark prosecution


Woolf & Nachimson, LLP’s IP lawyers help clients enforce and protect their trademarks against unlawful copying, use, sales, distribution, import, export or manufacturing throughout the world. Woolf & Nachimson, LLP’s lawyers are adept at working with and overseeing foreign counsel to obtain, monitor, enforce and leverage trademarks and trade dress throughout the world. Unlike larger firms, we offer a cost effective way for our clients to obtain a wide range of services, including clearance and registration, searches, licensing and advertising. We also counsel clients on global anti-counterfeiting and anti-infringement strategies.

Patent prosecution, post grant oppositions/reexaminations, reissues, and interference actions:

The patent field is growing each year – in terms of the number of patents filed, the complexity of those patents, and the number of infringement lawsuits. Once considered the province of high-tech companies, patents have become a focal point for business strategy for companies in a wide array of industries. As such, it is vital for companies to consider patents from both the technology and business perspectives. As globalization sweeps through virtually every industry, companies are often required to file their patents in more than one country in order to ensure protection.


In today’s world, managing patents is a global undertaking. Our IP attorneys have experience in managing international patent portfolios for major companies and organizations – including prosecuting thousands of patents. We strive to provide broad yet focused claim coverage for the patents we obtain for our clients. Working within our clients’ strategic business and cultural definitions, we help determine the inventions and patents of importance that speak to their business objectives.


Our patent capabilities run the gamut from application preparation and filing to examination and appeal processes to maximizing technology transfer opportunities – as well as handling patent litigation, when necessary. Through our experience working with a wide range of clients, we have developed a structured process for obtaining patent claims that provides strategic flexibility for our clients to best achieve their business goals.


Our patent attorneys are particularly skilled in the strategic planning of a patent portfolio, including writing successful patent applications in complex and novel situations, in anticipation of possible future litigation.


We work closely with clients from the earliest stages of their technical development, offering valuable advice about how to protect their inventions and new ideas in view of their business strategies. We are often called upon to advise clients on complex licensing, patent clearance, and adversarial matters, as well as to provide strategic business counsel regarding the development of products or technologies that may allegedly infringe patents held by competitors or that require the negotiation of royalty payments. When necessary, we assemble experienced teams of patent attorneys, patent litigators, and technical experts to address unique business or intellectual property issues that may arise.


Woolf & Nachimson, LLP’s IP lawyers have expertise in patent reexaminations. In these reexaminations, our attorneys have represented third-party requesters seeking to initiate reexamination, as well as patent owners defending patents in reexamination. Our experience in reexaminations is not limited to ex parte reexamination. Our IP lawyers are currently working on over a dozen inter partes reexaminations for clients.

IP licensing and IP Asset Purchasing:

Our IP lawyers advise clients in all aspects of intellectual property issues, including intellectual portfolio and asset management. Our lawyers are dedicated to offering clients strategic counseling and development services. Our lawyers understand our clients’ technology and are experienced in analyzing portfolios to present a variety of strategic alternatives for leveraging intangible assets into new market opportunities and revenue streams. These strategies include technology and merchandise licensing, business format franchising, joint ventures, strategic alliances and partnering, and co-branding.


We work regularly with clients in industries as diverse as biotechnology, chemicals, entertainment, financial services, hardware, Internet and e-commerce, medical devices, semiconductor, software, telecommunications and video games.


We frequently assist clients in establishing the core business terms of the deal in addition to advising on intellectual property rights allocation, licensing terms, warranties, indemnities, damages disclaimers, and limitations of liability. Also, we actively assist clients in creating new business models