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NEW YORK NEW JERSEY PENNSYLVANIA
WWW.BECKER.LEGAL
INTELLECTUAL PROPERTY PRACTICE
INTELLECTUAL PROPERTY PRACTICE
PRACTICAL ADVICE TO PROTECT YOUR MOST VALUABLE ASSETS
Intellectual property (IP) is one of the most im-
portant aspects of modern business. According to
Information Week, IP-based businesses now repre-
sent the single largest sector of the U.S. economy.
The Intellectual Property Group at Becker pro-
vides comprehensive intellectual property manage-
ment and strategic planning services. At Becker,
we understand that intellectual property is often a
company’s most valuable asset—a company’s life
blood. We understand our clients’ business goals.
We know they need advice that is practical, based
on real-world experience. We craft solutions de-
signed to interface with a company’s current busi-
ness model, addressing its immediate business needs, while also keeping in
mind its longer-term business objectives, maximizing the company’s IP rights,
while minimizing the impact on the company’s ability to generate revenue.
The firm represents a wide variety of entities, from large public companies to
middle market and start-up companies, to individual innovators in a broad
range of areas, including software development; weight loss products and ser-
vices; medical and other sophisticated devices; equipment leasing; and e-
commerce. Representative services include:
Trade secret protection
Due diligence related to formation
and execution of mergers, acquisi-
tions and joint ventures
Licensing
Trade related aspects of intellectual
property rights
Enforcement and litigation
Intellectual property best practices
Intellectual property audits
Non-disclosure issues
Non-competition and consulting
Trademark prosecution and branding
The Paris Convention
Madrid System or Protocol
World Intellectual Property
Organization
Community Trade Mark System
Domain name procurement
Copyright registration for written, visual,
graphic, sound recording, software, and
HTML materials
Berne Convention
Invention disclosures
www.becker.legal 2
According to “Information Week,” IP-based business-es now represent the single largest sector of the U.S. economy...we craft solu-
tions designed to interface with a company’s
current business model, addressing its immediate business needs while also
keeping in mind its longer-term business
objectives, maximizing the company’s IP rights, while minimizing the impact on the company’s ability to
generate revenue.
3
STRATEGIC MANAGEMENT OF INTELLECTUAL PROPERTY PORTFOLIOS We provide our clients with comprehensive IP ser-
vice to maximize their intellectual property hold-
ings. We help capture, register, enforce and mone-
tize these assets with an eye on the return on our
clients’ investments, employing various strategies
and tactics from both a legal and business perspec-
tive to meaningfully maximize these assets.
Tim Szuhaj, Becker’s Intellectual Property Chair,
continues to successfully represent Nutrisystem,
Inc., a national leader in the weight loss industry, in
prosecuting trademark applications and enforcing
the company’s trademark rights in the United States
and world-wide. We provide Nutrisystem with pri-
mary outside counsel regarding the vital issues re-
lated to building and protecting the company’s fa-
mous brand.
In addition to structuring and maintaining a substantial world-wide trademark
portfolio of over 250 marks, we vigorously pursue enforcement of Nutrisys-
tem’s rights on a world-wide basis via pursuing oppositions in the subject juris-
dictions, and pursuing administrative proceedings before various international
bodies, including the WIPO or beneficial interparty agreements. We continue
to counsel Nutrisystem with respect to day-to-day trademark and domain name
issues.
“Tim Szuhaj has been a most valuable resource over the years, aiding in maintaining the integrity of the Nutrisystem brand.
As we continue to help more and more Americans achieve their weight loss goals and live healthier
lives, we are confident in Mr. Szuhaj’s ability to continue to protect our
interests in matters concerning intellectual
property.”
-- Denise Bergner, Senior Director, Legal & Corporate Compliance,
Nutrisystem, Inc.
DOMAIN NAME PROCUREMENT
With the new information era confronting businesses, maintaining a brand iden-
tity has become increasingly complex. Internet presence is all but a must in the
modern marketplace. We provide our clients with counsel regarding the selec-
tion of domain name as it relates to their brands as well as the brands of other
companies.
www.becker.legal
INTELLECTUAL PROPERTY PRACTICE
COPYRIGHT REGISTRATION FOR WRITTEN,
VISUAL, GRAPHIC, SOUND RECORDING,
SOFTWARE, AND HTML MATERIALS
Through our representation of software and technology
companies, we are especially adroit at protecting rights in
software and related materials.
We advise clients on the synergistic relationship of copy-
rights to other types of intellectual property; the securing
of copyright protection filings; and strategy development
to maximize the revenue potential of copyrights. We also
protect clients' rights in court. We represented Lime Sys-
tems, Inc., which involved, first and foremost, the regis-
tration of its copyrights. Additionally, our Intellectual
Property Practice Chair, Tim Szuhaj, brought a suit
against former employees and the founder who left the
company, for copyright infringement and various other
contractual violations.
After vigorously prosecuting the matter, the case settled with our client obtain-
ing a substantial cash settlement. We also handle all of Lime Systems’ trade-
mark and copyright matters, helping the client to build its brand and maintain
its competitive advantage. We continue to represent Lime Systems in day-to-
day intellectual property matters.
“As our business continues to grow, safeguarding our
intellectual property has become an
increasing priority. We have
always been able to count on Becker to
provide us with comprehensive
intellectual property management and strategic planning
assistance.”
-- Bill Swank, President and CEO,
Lime Systems
4
INTERNET, CYBERLAW AND E-COMMERCE
Becker assists with the formation of online businesses such as limited liability
companies, corporations and non-profit companies. We draft legal disclaimers
for websites, including terms and conditions, privacy policies, online sale or
license agreements and hosting agreements, advising our clients on issues relat-
ed to online marketing, the Communications Decency Act, the Digital Millenni-
um Copyright Act and compliance with the Child Protection and Obscenity En-
forcement Act. The firm also represents clients with respect to online copyright
and trademark infringement, cybersquatting and other disputes.
www.becker.legal
INTELLECTUAL PROPERTY PRACTICE
Riverside Recreations LLC relies on our firm to provide advice regarding
all legal aspects of their social networking website, including trademark and
copyright issues, compliance with state and Federal statutes and regulations and
the preparation of Terms of Use, Privacy Policies and other legal documents.
PATENT LITIGATION
Becker represented Polytech Enterprises Ltd, a Chinese company, in extensive
patent litigation related to single-use film cameras. This litigation included the
question of the international applicability of the doctrine of patent exhaustion.
TRADEMARK PROCUREMENT AND BRANDING IN THE U.S. AND ABROAD Selecting the right trademark is integral to the
brand equity inherent in successful businesses.
Our trademark professionals not only guide cli-
ents through the clearance and registration pro-
cess, but also advise as to appropriate use to fur-
ther strengthen the goodwill associated with these
trademarks. We have extensive experience in
procuring and leveraging trademarks in the Unit-
ed States, Europe and Asia. For example, we
work with Infinitus Law Corporation of Singa-
pore to provide representation in the United
States for several of Infinitus’ clients. We provide counsel regarding U.S.
trademark practice and effectively prosecute U.S. applications for these foreign
business entities.
www.becker.legal 5
“We are committed to providing our clients with prompt and excellent legal solutions. Our relationship with Becker has helped us
facilitate proceedings in the U.S. to efficiently serve the
business needs of our clients regionally and worldwide.”
-- Jonathan Foong, Associate Director,
Infinitus Law Corporation
COPYRIGHT, PATENT AND TRADEMARK LICENSING
We understand that effective licensing of copyright, patent, trademark and know
-how assets creates value for our clients.
INTELLECTUAL PROPERTY PRACTICE
We represent clients in all phases of patent litigation,
both as lead counsel in the Federal District Courts
nationwide and the Court of Appeals for the Federal
Circuit, and as local counsel in the busy patent forum
that is the District of New Jersey.
The breadth and depth of our knowledge and experience allows our attorneys to assist our clients in formulating practical solutions to
expected and unexpected issues that arise.
www.becker.legal 6
We craft agreements that combine real-world commercial impact with our un-
derstanding of the legal ramifications of the agreement. We appreciate our cli-
ents' specific goals, including the likely problematic areas, and develop appro-
priate strategies to achieve our clients’ commercial targets.
Our familiarity with the technology sector
has given us extensive experience in drafting
numerous custom software development and
licensing agreements for our clients.
Tim Szuhaj has negotiated sophisticated
technology development and license agree-
ments for prominent inventors, including Dr.
Erol Veznedaroglu, Director of Neurosci-
ences and Endovascular & Cerebrovascular
Neurosurgery at Capital Health’s Stroke &
Cerebrovascular Center of New Jersey.
We negotiated a complex deal between Dr. Veznedaroglu and a prominent
West Coast medical device company. The
resulting Services and Technology Option
Agreement culminated in the development
and commercialization of cutting-edge medi-
cal technology, as well as very favorable
compensation for our client.
Likewise, the firm continues to represent the
Coalition of Cancer Cooperative Groups with
respect to licenses and services related to
CCCG’s industry-leading technology solu-
tions and services, including the commercial
roll-out and commercialization of both Trial-
Check,® a comprehensive, Internet-based
cancer clinical trial navigation and matching service containing all federally
registered cancer studies, and TrialTracker, a clinical trials navigation software.
We also advise CCCG regarding copyright matters, data ownership issues and
other general business matters.
“The field of health and medicine relies on innovation. Therefore, it is critical that technological discoveries be protected from
nception to completion in order for medical professionals to offer
patients the most advanced service available. Mr. Szuhaj understands this and has the
experience and professionalism to execute that protection
successfully.”
-- Dr. Erol Veznedaroglu
“As a non-profit organization, the Coalition’s mission is at the heart of our business dealings. Becker has been integral in se-
curing the integrity of our Trial-Check® system, which serves as a resource for patients, caregivers
and healthcare professionals. We value their support in helping us achieve
our mission.”
--Larissa Tis, Senior Director, eBusiness, Coalition of
Cancer Cooperative Groups
INTELLECTUAL PROPERTY PRACTICE
www.becker.legal
TRADEMARK, COPYRIGHT
AND LICENSING LITIGATION
AND ENFORCEMENT
We represent clients across the mar-
ketplace in trademark, copyright,
trade dress and trade secret infringe-
ment actions, as well as licensing dis-
putes, in the Federal Courts, the
Trademark Trial and Appeal Board
and administrative tribunals around
the globe. From the initial cease and
desist notice, through the preliminary
injunction phase and ultimately to
trial, we employ a dynamic, assertive and cost-effective approach to protecting
our clients’ valuable intellectual property rights.
Case Study: David Sprong, a partner
who concentrates his practice in IP liti-
gation, represented ASICS CORPORA-
TION in numerous successful trade-
mark infringement actions across the
United States designed to protect the fa-
mous ASICS footwear trademarks. Em-
ploying an aggressive approach at the
outset, these cases were often resolved
quickly during the preliminary injunction
phase of the litigation.
7
DEVELOPMENT AND OTHER “GO-TO-MARKET” AGREEMENTS
In addition to licensing, we counsel
clients about the various channels
available to commercialize their in-
tellectual property. These include
sophisticated Joint Development
Agreements; Commercialization
Agreements; Collaborative Research
Agreements; Domestic and Interna-
tional Marketing and Distribution Agreements; OEM Agreements; Reseller
Agreements; and End User Licenses.
We represent Lattice Incorporated, solution providers focused on reliable and
secure information and communications technology to the government and
commercial markets, regarding all of its intellectual property matters. We have
successfully negotiated various technology and patent licenses on behalf of Lat-
tice as well as providing litigation counsel as needed.
“The nature of our business requires sensitivity to matters concerning the
protection of our intellectual property. Becker’s expertise in this area
has been a tremendous value to us.”
-- Paul Burgess, President and CEO, Lattice Incorporated
INTELLECTUAL PROPERTY PRACTICE
We conduct a methodical and comprehensive review of all forms of intellectual
property in order to position the intellectual property assets for maximum value,
fully assess relevant risks, and develop negotiating strategies to achieve busi-
ness goals while minimizing those risks.
NON-COMPETITION, NON-DISCLOSURE AND CONSULTING
ISSUES
Whether our client is a consultant or a company, when a consultant is engaged,
the respective rights of the parties in their existing intellectual property and
their rights in the resulting intellectual property must be determined and memo-
rialized. We regularly draft agreements that not only delineate and protect each
party’s rights, but also maintain the agreed upon balance of competition with
respect to those rights.
DUE DILIGENCE RELATED TO, AND FORMATION AND EXECU-TION OF, MERGERS, ACQUISITIONS, AND JOINT VENTURES
We provide thorough due diligence services in connection with disposition of intellectual property, whether by sale, license, or purchase, or the pursuit of re-search and development agreements.
www.becker.legal 8
INTELLECTUAL PROPERTY PRACTICE
www.becker.legal 9
Continued...
Timothy J. Szuhaj, Esq., Partner
Chair, Intellectual Property and Technology Group
Timothy J. Szuhaj is a partner in the firm and chairs the intel-
lectual property and technology practice group. In addition to
specializing in intellectual property law and portfolio manage-
ment, technology law, Internet law, and e-commerce law, Mr.
Szuhaj handles general corporate and commercial matters.
His private practice includes prosecution of trademark, service mark and copy-
right applications and assignments (foreign and domestic); negotiating and
drafting numerous licenses, including software, patent, trademark, trade name
and technology licenses; managing all aspects of various clients' intellectual
property portfolios, including cost management associated with creating and
maintaining such portfolios, drafting cease and desist letters, and employment
contracts and employee handbooks regarding work for hire and confidentiality;
advising clients on the formation and operation of businesses; drafting agree-
ments for joint ventures, channel partners and numerous varieties of "go to mar-
ket" ventures; and negotiating and drafting general corporate and commercial
documents. Included in Mr. Szuhaj’s clientele is Nutrisystem, Inc. and its sub-
sidiaries, for which he is the sole trademark counsel. As such, he manages all
facets of the company’s substantial domestic and international trademark port-
folio of over 250 marks.
In addition to his private practice experience, Mr. Szuhaj also has significant in-
house experience. He served as both Deputy General Counsel and Intellectual
Property Counsel to Verticalnet, Inc., a publicly owned enterprise software and
e-commerce company.
His responsibilities included licensing intellectual property, human resources,
service contracts, sale process and consulting and procurement issues. Mr.
Szuhaj also served as Vice President of Vert Tech LLC, the wholly-owned in-
tellectual property subsidiary of Verticalnet, Inc. As such, he was the primary
officer responsible for the formulation of domestic and international intellectual
property business strategies and management of the company-wide intellectual
property portfolio.
INTELLECTUAL PROPERTY PRACTICE
www.becker.legal 10
Continued...
Mr. Szuhaj has presented numerous intellectual property seminars, including:
"Contempt Hearings in Patent Litigation", Pennsylvania Bar Institute, August
2011; the 20th Annual Meeting of the Federation of Exchange Accommodators,
Intellectual Property and Other Personal Property Exchanges, October 2, 2009,
Orlando Florida; CLE Seminars; West Legalworks, Issues of Liability in Online
Business Commentary Webinar 2008, Protecting Brand and Reputation: the
Communication Decency Act and Beyond; The Entrepreneur Institute, Presi-
dent’s Forum 2007, Knowing What You Don’t Know – How to Profit from
Hidden Risks that Threaten Your Company; and The Pennsylvania Bar Insti-
tute’s Technology Law Fora 2005, 2006 and 2007 and Intellectual Property De-
velopments Impacting E-Commerce in 2008, Intellectual Property Develop-
ments Impacting E-Commerce in 2007, and Intellectual Property Case Law De-
velopments Impacting E-Commerce in 2006.
Mr. Szuhaj has authored or co-authored several articles, including :"A Chance
to Select a Standard for Use of Summary Contempt in Patent Cases," New Jer-
sey Law Journal (March 21, 2011); “Trademark Practice After In re Sones:
Subtle but Important Shift in IP Law Opens Door for Internet Businesses,” The
Legal Intelligencer (May 11, 2010); “Internal Cross-Marketing: Picking the
Low-Hanging Fruit,” The Legal Intelligencer (December 28, 2009); “Brand
Building and Asset Protection: Adding Value to Amusement Business,” Park
World (November 2009); “What is a ‘Patented Invention?’ The Federal Cir-
cuit's Decision in Proveris Scientific Corp. v. Innovasystems, Inc.,” Upon Fur-
ther Review, the Philadelphia Bar Association News Letter April 4, 2009.
Mr. Szuhaj received his B.A. in Chemistry from Indiana University and his J.D.
from Villanova University School of Law, where he was editor-in-chief of the
Villanova Environmental Law Journal. Mr. Szuhaj is a member of the Ameri-
can Bar Association, the American Intellectual Property Law Association, and
the International Trademark Association. Most recently, he was elected to the
Schuylkill Center for Environmental Education Board of Trustees.
INTELLECTUAL PROPERTY PRACTICE
www.becker.legal 11
David J. Sprong, Esq., Partner
David J. Sprong is a partner in the firm practicing in the litiga-
tion, intellectual property, and employment and labor depart-
ments. Mr. Sprong represents large and small businesses in var-
ious commercial litigation matters, including various types of
business disputes; claims of breach of contract, including lease
and financing agreements; claims of fraud and defamation; con-
struction disputes; and healthcare matters. He has substantial ex-
perience in disputes involving intellectual property and computer technology,
litigating trademark, patent and copyright infringement in cases nationwide. He
has enforced and protected clients' trademarks by obtaining preliminary and
permanent injunctive relief for trademark infringement, and has defended sig-
nificant claims of patent infringement. He also has litigated actions involving
computer software and hardware, and is well-versed in electronic discovery and
data storage, maintenance and retrieval issues. He served as a Barrister in the
John J. Gibbons American Inn of Court for Intellectual Property Litigation and
Federal Practice.
Mr. Sprong has practiced for more than 10 years in the state and federal courts
of New Jersey and New York and is experienced in the procedural and substan-
tive aspects of litigation matters.
He often represents out-of-state entities as local counsel in the courts of New
Jersey and New York and has represented clients as in significant actions in
Pennsylvania, Florida, California, Massachusetts, Missouri, Illinois, and Minne-
sota.
Mr. Sprong has experience in all facets of litigation, from case inception
through trial. In cases, he employs an assertive and cost-effective approach to
protecting the rights of his clients. He also has significant experience in resolv-
ing cases without the need for trial through various alternative dispute resolu-
tion methods.
Continued...
INTELLECTUAL PROPERTY PRACTICE
Mr. Sprong has represented varied clients including Horizon Blue Cross Blue
Shield of New Jersey, ExxonMobil, Asics Corporation, KPMG, Wal-Mart
Stores, Inc., Danka Office Imaging Company, the Middlesex County Joint
Health Insurance Fund, Toys 'R' Us, Inc., Foster Wheeler Corporation, the Es-
sex County Prosecutor's Office, and the University of Medicine and Dentistry
of New Jersey.
An active member of the New Jersey and New York bars, Mr. Sprong is admit-
ted to practice in the United States District Courts for the District of New Jersey
and for the Southern and Eastern Districts of New York. He is a member of the
Litigation and Labor and Employment Law Sections of the American Bar Asso-
ciation, and also is a member of the New Jersey State and Essex County Bar
Associations.
He obtained a J.D. degree, magna cum laude, from Seton Hall University
School of Law, and is an alumnus of Rutgers College. Before joining Becker as
a partner, Mr. Sprong practiced in the litigation and employment law depart-
ments of Wolff & Samson PC.
www.becker.legal 12
Continued...
INTELLECTUAL PROPERTY PRACTICE
Continued...
Firm Profile
Becker is a premier mid-market firm serving the
New York, New Jersey and Philadelphia corri-
dor. The firm provides litigation, transactional,
counseling and regulatory representation to clients
ranging from major multinational corporations to
local businesses, families and individuals. Our size
and regional footprint allow us to provide sophisticated services in a manner
focused not only on results, but also on our clients’ return on their legal invest-
ment.
Becker is one of the few firms of its size and caliber that can boast of a minori-
ty, female founding partner, Stacey L. Meisel. The belief in diversity starts at
the top, and as with many of the firm’s corporate clients, is a cornerstone of the
firm’s mission statement.
Becker takes great pride in the fact that minority and/or women attorneys are
found at every level of the firm, and the firm is committed to hiring from the
broadest applicant pool. Much in line with the corporate commitment to the
highest business ethics, rigid adherence to the Rules of Professional Conduct is
embedded in the firm’s culture.
Three former Governors of New Jersey have turned to the firm for advice and
guidance on ethics, which included an appointment to conduct a thorough audit
of the ethics rules, statutes, regulations, and codes of conduct for all employees
of the Executive Branch and state authorities, and provide a comprehensive
plan to improve and strengthen them.
The highest quality work product, the investment in technology that allows for
a seamless partnership with clients, attention to return on investment (and a rate
structure in line with that philosophy), devotion to diversity, professional re-
sponsibility, and, above all, a commitment to make our clients’ causes our own
cause, have been the defining qualities of Becker. These qualities have garnered
the respect of the bench and bar, adversaries and co-counsel, and will be the
firm’s guiding light for the future.
≈
www.becker.legal 14
Becker has earned an AV rating from Martindale-
Hubbell, which is the high-est possible rating for legal
ability and ethics.*
INTELLECTUAL PROPERTY PRACTICE
www.becker.legal 15
Disclaimer The information, materials and services offered herein are for general informa-tional purposes only and do not constitute legal advice. The foregoing is pre-sented without any representation or warranty whatsoever, including as to the accuracy or completeness of the information. Examples of cases previously handled by this firm are for informational purposes only. Prior success in such cases does not guarantee similar results in future cases. No one should, or is entitled to, rely in any manner on any of the information contained herein. Par-ties seeking advice on a particular matter should consult with legal counsel fa-miliar with their particular circumstances. *Martindale-Hubbell is the facilitator of a peer review rating process. Ratings reflect the anonymous opinions of members of the Bar and the Judiciary. Martindale-Hubbell Peer Review Ratings fall into two categories—legal ability and general ethi-cal standards. No aspect of this advertisement has been approved by the Supreme Court of New Jer-sey.
INTELLECTUAL PROPERTY PRACTICE
With offices in New York ,New Jersey, and Pennsylvania,
Becker is strategically located at the heart of the metro
area with easy access to all cities in the Northeast
corridor...
Offices:
New Jersey Office
Becker
354 Eisenhower Parkway
Plaza II, Suite 1500
Livingston, NJ 07039
Tel: 973-422-1100
Fax: 973-422-9122
New York Office
Becker
240 Madison Avenue,
7th Fl.
New York, NY 10016
Tel: 212-390-8407
Fax: 646-619-4699
www.becker.legal
Pennsylvania Office
Becker 1515 Market Street, Suite 1200
Philadelphia, PA 19102
Tel: 856-779-8700
Fax: 856-779-8716