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Practices 2018-02-05T13:39:11+00:00

AREAS OF PRACTICE

Strategic IP Counseling
Patent Drafting & Prosecution
Trademark & Copyright Law
Litigation & Enforcement
IP Licensing and Technology Transfer
Brand Protection
Trade Secrets
Commercial Litigation
Employment Law

STRATEGIC INTELLECTUAL PROPERTY COUNSELING

Marbury attorneys transform your ideas and innovations into valuable IP assets.

Our attorneys manage large, medium, and small patent portfolios, and recognize your need for prompt, high quality strategic advice.  We help start-up and emerging technology companies leverage their intellectual assets to achieve their business goals.  In fact, many of our team members have worked at start-ups, and understand the demands facing start-up and emerging technology companies.

Our attorneys work with your technical personnel to harvest potential intellectual property from your innovative development work.  We have the technical skills to understand your technology and how your innovations can provide you with competitive advantages.  Our diverse technical backgrounds, graduate engineering degrees, former industry, and USPTO experience allow us to quickly grasp, describe, and claim the inventions in your patent applications.  Our lower overhead allows us to offer flat fees and keep our billing rates significantly lower than those of “big-law” firms, which allows us to take the time to understand the technology behind each invention and to provide cost effective answers, strategies, and patent applications.

Furthering your business is our priority.  Your business plan becomes the focus of our IP counseling and strategic advice.  Let us put our knowledge and experience to work for you.

IP Due Diligence
IP Audits
Patent & Trademark Opinions
Valuation of IP Assets
Patent Portfolio Management
Monetization of IP Assets
Set-up of IP Program for Start-Ups
Patent Landscape and Freedom to Operate Analysis
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PATENT DRAFTING & PROSECUTION

A primary area of our practice is the drafting and worldwide prosecution of patent applications.
The Marbury Law Group drafts and obtains thousands of U.S. and foreign patent applications each year for national and international clients.
We have experience in drafting and prosecuting patent applications in most technical areas:

  • Automation, Robotics, and Artificial Intelligence (AI)
    • Speech Recognition
    • Neural Networks
    • Machine Learning
    • Machine Vision
    • Autonomous Vehicles
    • Drones and Automated Flight Systems
    • Industrial Automation Controls
    • Human-Machine Interfaces
  • Software, Internet, and Business Methods
    • Computer Architecture
    • Information Systems
    • Internet Enabled Business Methods
    • Computer Scheduling Methods
    • Network and Email Security
    • Medical Billing and Recording Software
    • Internet-of-Things (IoT) Devices
    • Cybersecurity Systems
    • Digital Assets and Crytpocurrency
    • Blockchain Systems
  • Advanced Materials, Semiconductors and Physics
    • Telecom Semiconductor Devices and Processing
    • Semiconductor Memory Devices and Processing
    • Semiconductor Packaging and Package Testing
    • LEDs and Display Devices
    • Photo-Optics and Photolithography
    • Photographic Processes
    • Filters and Material Purification
    • Metallurgy and Ceramic Processing
    • Building Materials
    • Semiconductor Fabrication Equipment
    • Organic Electronics
  • Nuclear Engineering and Special Power Systems
    • Nuclear Reactor Components
    • Space Power Systems and Components
    • Nuclear Materials and Applications
    • Special Power Systems and Applications
  • Mechanical and Medical Devices
    • Ultrasound Medical Devices
    • Ultrasound Catheters
    • Cardiac Stimulation Devices
    • Medical Robotics and Related Systems
    • Toys
    • Food Storage and Equipment
    • Cosmetic Devices
    • Dental Implants
    • Bone Implants
    • Contact Lens Technology
  • Cleantech
    • Batteries and Energy Storage Devices
    • Fuel Cells
    • Solar Cells
    • Thermoelectric Devices
    • Power Conditioning and Control Systems
    • Solid State Lighting Devices and Control Systems
    • Energy Management and Advanced Demand Response Systems
    • Smart Windows
  • Electronics and Telecommunications
    • Antennas
    • Communications Systems and Devices
    • Video On Demand Systems and Methods
    • Digital Image Processing
    • Digital Telephony and VOIP
  • Nanotechnology
    • Nanoresonators
    • Nanowires and Nanotubes
    • Nano-composite Materials
    • Nano-optical Gas Sensors
    • Nanostructured Catalysts
  • Chemical, Life Sciences, and Biotechnology
    • Bioinformatics
    • Biosensors
    • Polymer Chemistry
    • Gas Separation and Heat Exchange
    • Pharmaceutical Chemistry
    • Biochemistry
    • Cleaning Compositions
    • Cosmetic Formulations
    • Radiopharmaceuticals
    • Newtonian and Non-Newtonian Fluid Mechanics
    • Electrochemistry
Our Patent Prosecution Professionals
Fine-Tuned Patent Prosecution Infrastructure
Strategic Metro D.C. Area Location
The Marbury Approach to Patent Drafting & Prosecution
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TRADEMARK & COPYRIGHT LAW

Since 2008, IP Today has annually listed The Marbury Law Group as one of the Top Trademark Firms, and LAW WORKS magazine listed The Marbury Law Group (under the former name Roberts Mardula & Wertheim) as one of the top 100 law firms nationwide in obtaining trademarks for its clients.  The attorneys at Marbury Law are available to provide comprehensive service in federal, state, and international trademark practice to include screening and opinions on proposed marks, dispute resolution, and licensing of trademarks and service marks.  Marbury Law was central to establishing international mechanisms for approval of trademark identifications among Japan, Europe, and the United States.

The Marbury Law Group’s attorneys assist in such areas as negotiating the terms and conditions of publishing, marketing, royalty and assignment contracts, as well as those of licensing and syndication agreements.  In conjunction with the client, Marbury attorneys participate to help determine which rights to sell or license, international aspects, contracts with illustrators and other professionals, and additional measures that may be needed to avert literary theft.  Marbury can also act as a literary agent, matching the creative product with the appropriate publisher, promoter, and marketer.  For the benefit of the client’s pocketbook, Marbury Law makes extensive use of its paralegal staff to provide cost-effective service on routine copyright matters.

The Marbury Law Group has a successful and diverse trademark practice that covers all aspects of brand strategy and protection:

  • Trademark Selection
    • Trademark availability searches and analyses
  • Trademark Monitoring and Use
    • Monitor U.S. and international databases for use of identical or similar marks that might conflict with clients’ marks
    • Monitor clients’ own use of mark on websites, labels, marketing materials and products to ensure compliance with U.S. trademark laws
  • International
    • File applications abroad either through Madrid Protocol, as Community Trademark or directly in country of interest
  • Trademark Prosecution
    • File applications at state and federal level
    • Respond to USPTO Office Actions
    • Maintain marks post-registration with state and federal agencies
  • Trademark Oppositions and Cancellations
    • Institute proceedings at USPTO Trademark Trial and Appeal Board against owners and/or registrants of conflicting marks
    • Defend proceedings at USPTO Trademark Trial and Appeal Board from owners of allegedly conflicting mark
  • Licensing
    • Negotiate licenses and co-existence agreements
  • Litigation
    • Prepare cease and desist letters to owners of conflicting marks
    • Institute lawsuits in federal and state courts against owners of conflicting mars
    • Defend lawsuits in federal and state courts from owners of allegedly conflicting marks
    • File actions under Uniform Domain-Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers (ICANN) to obtain transfer and ownership, or cancellation of domain names improperly registered to third parties which conflict with client’s mark  proceedings

Since 2008, Intellectual Property Today has annually listed The Marbury Law Group as one of the Top Trademark Firms, and LAW WORKS magazine listed The Marbury Law Group (under the former name Roberts Mardula & Wertheim) as one of the top 100 law firms nationwide in obtaining trademarks for its clients.  The Marbury Law Group was also central to establishing international mechanisms for approval of trademark identifications among Japan, Europe, and the United States. Experienced Marbury attorneys can provide comprehensive service in federal, state, and international trademark practice to include screening and opinions on proposed marks, dispute resolution, and licensing of trademarks and service marks.

Marbury’s attorneys can assist in such areas as negotiating the terms and conditions of publishing, marketing, royalty and assignment contracts, as well as those of licensing and syndication agreements.  Our attorneys will work cooperatively with you to determine which rights to sell or license, international aspects, contracts with illustrators and other professionals, and additional measures that may be needed to avert literary theft.  Marbury can also act as a literary agent, matching the creative product with the appropriate publisher, promoter, and marketer.  Marbury also makes extensive use of our paralegal staff to provide cost-effective service on routine copyright matters.

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Litigation and Enforcement

Marbury attorneys have extensive experience in the areas of patent infringement litigation, trademark disputes, copyright infringement litigation, theft of trade secrets litigation, inter partes review proceedings, post grant review proceedings, Section 337 litigation, and other business litigation matters.

It is generally preferable to avoid the high emotional, financial, and time costs of litigation.  At The Marbury Law Group, the litigation team works proactively with our clients to review business plans, agreements, contracts, and more to mitigate the possibility of disputes and lessen the possible ramifications should disputes arise.

If and when the need arises and a client wishes to aggressively enforce its rights, we will assist the client in this objective.  Likewise, if a client wishes to quietly settle a matter through a licensing and/or settlement agreement, we will aid them in negotiating desired terms.  Throughout the litigation process we work closely with our clients, maintaining ongoing communication regarding all aspects of their case, and collaborating in decision-making associated with the litigation.

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IP Licensing and Technology Transfer

The Issue

Marbury can assist your company in exploiting your intellectual property to the fullest extent. Companies spend many thousands of dollars to research and perfect technology, and many more thousands of dollars to obtain patent protection for that technology.  However, such activity frequently takes place without regard to its position in an overall marketing and/or licensing plan for these patents.  In many instances, companies retain a stockpile of potentially valuable patents without gaining any financial benefits from their inventive works.

The Marbury Solution

We counsel clients on the complete business spectrum of intellectual property. Our job is not complete when a patent issues; it is just beginning. Since the firm’s inception, we have focused on bringing more value to each client’s patent portfolio by maximizing profits through the marketing, licensing, and/or sale of IP assets. We have experience doing so in all areas of technology through public auctions, direct sales, and licensing agreements both nationally and internationally.

The difference at Marbury is that we see patent prosecution as the first step in exploiting intellectual property. We formulate patent applications with the forethought of utilizing said patents to bring more financial gain to our clients.

Monetization of IP Assets

The Marbury Law Group has helped several clients turn their IP assets into cash or cash flow through sales and licensing.  For those clients looking to license their technologies, we can help identify prospective licensees, initiate or facilitate contacting targeted licensees, and negotiating the license agreement. In some cases, licensing IP assets requires the threat of or initiation of litigation, with which we are very experienced.  For clients looking to sell some or all of their IP portfolio, we can identify the likely bidders, prepare the necessary offering memoranda, offer the portfolio to prospective buyers and attempt to initiate a bidding war, negotiate the deal, negotiate the assignment documents, and manage the exchange of IP assets and consideration.  Depending upon each client’s preferences, budget and portfolio, we have monetized IP portfolios ourselves as well as worked with agents, brokers, and auction houses.  In support of such efforts, we also aid clients in preparing their portfolio for monetization.

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Brand Protection

You work hard to build your brand and your reputation, both in the U.S. and abroad, and Marbury can help you secure and protect them. Infringing products, counterfeiting, pirated products, and grey market goods present numerous and complex legal problems. We have the experience, resources, and agility to address these brand protection challenges and to cost-effectively safeguard your brands.

Our experience enables us to develop brand protection strategies tailored to our clients’ specific markets, supply chains, and business goals. Protecting our clients’ brands is our priority. We work with our clients to understand their businesses and make their business goals a central part of our advice. We believe in designing strong brand protection strategies that are proactive, multifaceted, and aggressive. We focus on identifying and recording our clients’ IP related to their brands, educating all relevant parties who can contribute to the protection of our clients’ brands, monitoring and investigating suspected infringers and counterfeiters, and enforcing our clients’ rights through the most cost-effective, time-efficient, and direct mechanisms available.

Marbury’s deep bench of talented attorneys have intellectual property enforcement experience in local and federal courts, as well as before the U.S. administrative agencies responsible for enforcing U.S. Customs, anti-counterfeiting, and Lanham Act infringement laws. Marbury attorneys routinely interact with both government officials and private investigators to marshal the forces necessary to commence and implement civil and criminal action to protect our clients’ brands and products. Additionally, our attorneys have experience working abroad to protect brands in today’s global marketplace.

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Trade Secrets

Marbury attorneys can work with you to protect your proprietary information and trade secrets.  We work with clients to ensure physical protections and policies are in place to ensure proper protection for client trade secrets.  We also help clients choose between trade secret and patent protections for proprietary innovations.  By helping to identify and protect their trade secrets, we help our clients build and maintain this important class of intellectual property. Our trade secret services include:

  • Inventory of trade secret assets
  • Auditing measures in place for protecting trade secrets
  • Reviewing and establishing company trade secret protection policies
  • Supporting client nondisclosure agreement forms and records
  • Assisting in the trade-off between patents and trade secrets
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Commercial Litigation

The Marbury Law Group’s litigators practice in the federal and state courts at both the trial and appellate levels on a wide range of commercial matters.  We represent clients through the life of the dispute from the initial fact-finding stage through enforcement of judicial determinations.  We listen to our clients carefully, fully learning the intricacies of their business, the nature of the dispute, and weighing all options to arrive at the most desirable outcome.

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Employment Law

The Marbury Law Group counsels its clients in a variety of areas relating to employment law. Unlike many firms, Marbury represents both business employers and employees.  As a result, our attorneys have a dual employer and employee perspective that enables them to anticipate and counsel as to all appropriate issues.

Our employment practice offers the following services to clients:

  • Agreements not to compete, restrictive covenants, and trade secret protection.
  • Drafting, reviewing, and implementing employment handbooks, personnel practices, and employment policies.
  • Employment law training for managers.
  • Employment law training for non-managerial employees.

When called upon, our firm can also provide counseling in other areas of employment law, such as:

  • Employment benefits.
  • Employment discrimination.
  • Employment-related torts, such as defamation, negligent hiring and retention, and wrongful discharge.
  • Review and counseling on severance agreements.

The Marbury Law Group both advises and litigates in all of the foregoing areas when it is appropriate.  We represent clients in the U.S. federal district courts, local state courts, as well as before the EEOC and Merit Systems Protection Board.

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