Intellectual Property

Intangible assets and technology, such as brands, trade secrets and know-how, are increasingly critical for businesses. We advise and represent businesses in identifying, acquiring, protecting and exploiting their intellectual property (“IP”) and technology.

Intellectual Property Management. We assist clients in the identification, protection and management of their trade secrets, trademarks, patents, copyrights and Internet domain names. We conduct corporate audits or inventories of such intangible assets. We can help clients develop intellectual property policies and practices. For instance, we help businesses establish trade secret protection programs, including through confidentiality agreements, non-disclosure agreements or NDAs, works-for-hire agreements and non-competition agreements. Similarly, we can help clients protect investments in research and development by arranging patent searches and prosecutions with respect to inventions and improvements.

Licensing and Assignment. We frequently negotiate licenses to, and assignments of, trade secrets, know-how, trademarks, patents, software and other intangible assets. Accordingly, we counsel clients regarding territory, exclusivity, fee, royalty, technical assistance or support, enhancement, infringement indemnification and source code escrow arrangements.

Information Technology Projects. We work with clients in the business of developing and marketing information technology products or services, such as hardware, software or consulting. And, all clients are purchasers of such products and services, which are often for mission-critical functions and applications. Accordingly, we routinely negotiate license, outsourcing, development, integration, implementation and maintenance agreements for ERP, CRM, database, website and many other types of projects. For example, we assist clients in reaching appropriate terms milestones, service levels, warranties, work product ownership and change management.

Internet Business and Electronic Commerce. We assist clients with conducting business online, such as by preserving user privacy, allocating territorial rights for "cyberspace" sales and minimizing the risk of being taxed or sued in remote jurisdictions. Consequently, we prepare website terms of use, privacy and security policies and other “clickwrap” agreements. We also provide counseling about email practices, metatag, framing, linking, cybersquatting, and other Internet issues. We advise clients on contracting for web development and hosting services as well.

Privacy and Security. Data or new products may be sensitive and heavily regulated for a variety of reasons, such as military secrecy, terrorism prevention, national security, consumer privacy and environmental or health protection. We assist clients in understanding and complying with such requirements. For example, we provide advice and assistance in connection with new products or transactions regarding Exon-Florio and other national security requirements, "top secret" and classified defense contracting information restrictions, HIPAA, G-L-B, FTC and other data privacy directives and “deemed export" and other export controls.

The attorneys and lawyers of Jeremy A. Gibson & Associates, P.C. are experienced in handling intellectual property and technology matters throughout the United States, including the Chicago, Illinois area. Please see our Experience page or contact us.