Practice Areas
Intellectual Property
The Intellectual Property Section of Chambliss, Bahner & Stophel, represents a growing number of clients doing business in a wide variety of industries. Our practice includes matters of domestic and foreign patent procurement, trademark and copyright registration, trade dress and trade secret protection, licensing, employment/invention, nondisclosure agreements, and related litigation.
Copyrights. Our attorneys have extensive experience in counseling clients regarding the protection and use of copyrighted materials in both the United States and abroad. We assist clients with the preparation and filing of copyright registration applications in the United States Copyright Office. We have experience negotiating and preparing copyright licensing agreements on behalf of our clients. In addition, we have experience in representing clients in litigation relating to the scope and infringement of copyrights.
Patents. Our patent attorneys counsel clients on all matters relating to the preparation and prosecution of patent applications and patent-related litigation in the United States and abroad. We have experience in the preparation and prosecution of patent applications in the business method, chemical, electrical and mechanical arts. We assist clients in developing strategies for obtaining and protecting valuable intellectual property assets. Among the services provided by our patent attorneys are the following:
- Initial investigation of potential patentability of inventions
- Preparing and prosecuting both national and international patent applications, including provisional, utility, design, and PCT applications
- Client counseling and preparation of opinion letters regarding infringement and validity of patents and patentability of inventions
- Litigation involving patent infringement, validity, licensing, and related matters
- Negotiation and preparation of licensing, nondisclosure, employment/invention, and other related agreements.
In addition, our patent attorneys utilize their diverse technical backgrounds and extensive legal experience to counsel our U.S. and international clients on matters involving the interplay between foreign and domestic standards for patentability and other issues such as when, where, and how to file a patent application.
Trademarks. Our trademark attorneys counsel clients on the selection and protection of their valuable trademarks, service marks, and trade names. We conduct searches to determine a mark's availability for use and registration and prepare and prosecute applications for registration of trademarks and service marks in the United States and abroad. Our attorneys assist clients with the monitoring and maintenance of their valuable marks and names. We regularly handle cancellation and opposition proceedings before the United States Trademark Trial and Appeal Board. Our experienced litigators also handle a wide variety of matters ranging from enforcement actions to infringement claims.
Technology Transfer & Licensing. Our IP Group has substantial experience in structuring transactions to allocate the risks and responsibilities for the development, protection, licensing, and distribution of a wide variety of intellectual property. We advise clients on issues such as corporate structure, capital acquisition, and general business matters. During the due diligence process, we assist clients with review of materials, and we prepare the appropriate business documents. We provide assistance and counsel with respect to:
- Data sharing transactions
- Distribution agreements
- Franchise agreements
- Joint marketing agreements
- Patent, trademark and copyright licensing agreements
- Procurement contracts
- Research and development agreements
- Software licensing agreements
- Trade secret agreements
- Web site development and maintenance contracts.
- IP Litigation.
IP Litigation. Our attorneys have extensive experience in all aspects of intellectual property litigation in venues located around the country. As examples, we have tried numerous patent infringement cases and trade secret cases to verdict, successfully resolved copyright claims through motion practice and on appeal, and prevailed in cases argued before the Trademark Trial and Appeal Board.
Recent Representative Matters
- Represented the defendant owner of a chemical patent that describes and claims methods for applying fiber reactive dyes to cationic dyeable nylon in such a way as to produce covalent bonding between the dye and the nylon substrate, which consequently renders the dyed nylon highly stain-resistant. The plaintiff company held patents relating to a method of dying cationic dyeable nylon with acid dyes, and argued that the method contemplated by our client's patent and practiced by our client infringed the claims of the plaintiff's patent. This case was resolved as the jury was being selected.
- Represented a group of companies in multiple cases pending in the Eastern District of Tennessee and the District of Delaware. The technology at issue related to a method of inserting fiber optic bundles in underground conduit, using the fluid drag of compressed air.
- Represented one of several defendants in a matter involving thermal desorption plants, sometimes referred to as soil remediation plants. These systems are used to clean contaminated soil through a thermodynamic process.
- Defended clients charged with infringing patents containing apparatus claims directed to rock crushing machines with "tramp iron" relief systems. "Tramp iron" is stray iron and other uncrushables that can cause disruption of and damage to rock crushing machines during normal operations, if such machines are not equipped with an apparatus to allow the uncrushable material to escape. The dispute centered largely on the relationship of the "tramp iron" system to the frame of the accused device.
- Represented the manufacturer of hotmix asphalt plants in three different cases. Two of the cases involved patents containing apparatus claims describing a method for introducing reclaimed asphalt payment "rap" into the drum mixer and the process of mixing that additive with virgin rock and liquid asphalt to produce new hotmix asphalt. The dispute in the case centered on the design of a collar device for introducing the material into the drum mixer and the process by which that device caused the material to mix together.
- Another case for the same manufacturer involved specialized technology for the design of a counterflow drum mix system for superheating, drying and mixing virgin and recycled aggregate material with liquid asphalt, also known as "asphaltic concrete" for the making of hotmix. The claims in the case involved the alleged infringement of apparatus and process claims relating to the use of a multi-chambered device, the flows of material inside that device and its relationship to the overall hotmix asphalt production process.
- Currently representing a manufacturer accused by a competitor of infringing a patent involving a chemical process for manufacturing seven-layer stretch wrap film.
- Currently representing a manufacturer of rock crushing and screening equipment accused by a competitor of infringing a patent involving conveyor design.
Please visit our IP Information Center for more information on copyright, patent and trademark law.