IP Strategy and Counseling

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IP strategy and counseling for companies that want their patents, trademarks, copyrights, and trade secrets to match the business plan: ongoing advice, portfolio management, diligence before deals, and formal opinion letters that support decisions and hold up when challenged.

Most companies own more intellectual property than they realize and protect less of it than they think. Code sits in repositories without clean assignments, brands launch before anyone runs a clearance search, and trademark renewals lapse because the docket lived in a former employee's inbox. Our IP strategy and counseling service fixes that from the business side. We work out what you own, what it is worth to the plan, what threatens it, and what to do next, then we stay on as outside IP counsel so those answers keep pace with the company. The work is led by lawyers who understand software and product development, which means we can read your architecture, your contracts, and your roadmap together and give advice your engineering and executive teams can both act on.

What This Service Covers

IP strategy covers every form of intellectual property a company relies on: utility and design patents, federal and state trademarks, registered and unregistered copyrights, trade secrets protected under the Defend Trade Secrets Act and state law, and the contracts that move those rights between people. Counseling means connecting those assets to decisions: whether a feature should be patented, kept as a trade secret, or simply shipped; whether a name is safe to launch; who owns the code a contractor wrote; and whether you can sell into a market without a license. We answer those questions in writing, set priorities against your budget, and build the records, such as invention disclosures, assignment chains, and docket reports, that make your rights enforceable later. One point of scope: we do not prepare or prosecute patent applications, and when a filing makes sense we coordinate with prosecution counsel you choose.

The Four Services In This Group

IP Counseling is ongoing advice as decisions come up, from protection strategy and employee invention programs to risk calls on a competitor's rights. IP Portfolio Management keeps registered rights alive and aligned with the business: docketing, patent maintenance fees due at 3.5, 7.5, and 11.5 years, trademark Section 8 and Section 9 filings, and periodic reviews of what to keep, drop, license, or sell. IP Due Diligence examines a target's or partner's IP before you invest, acquire, or license, confirming ownership, encumbrances, and open-source exposure. Opinion Letters give you formal written analysis on infringement, validity, freedom to operate, trademark clearance, or copyright questions, the kind of documented advice a board, an investor, or a court will take seriously. Each can be engaged on its own, and most clients use two or more together.

Where Strategy Meets Disputes

Good IP strategy is mostly dispute planning done early. Infringement suits, trade secret claims, and ownership fights usually turn on facts that were set years before anyone filed: whether an inventor signed a present assignment, whether a company took reasonable measures to keep information secret, whether a mark was cleared before launch. Because we are also a litigation firm, we counsel with the courtroom in mind. We know what a defendant will attack in a patent's chain of title, what a jury will make of a sloppy confidentiality program, and how a well-reasoned opinion letter can answer a willfulness charge after Halo Electronics v. Pulse Electronics. When a dispute does arrive, the record we built becomes your evidence, and the same team can carry the matter into a demand, a negotiation, or litigation.

Advice, Reviews, And Deliverables

The advisory work produces things you can use. A typical engagement yields an IP inventory mapped to products and revenue lines, a protection plan that ranks what to file, register, or keep confidential, and a docket report showing every deadline over the next several years. For transactions we deliver a diligence memo that flags issues by severity, proposes fixes, and suggests representations, warranties, and closing conditions. Opinion engagements end in a signed letter with the claim construction, prior art, or likelihood-of-confusion analysis spelled out. We also draft the documents that make a strategy real, including invention assignment agreements, contractor IP clauses, trade secret policies, and license terms, so the plan does not stay on paper.

How An Engagement Runs

We start with a scoping call and a document request: existing registrations, key contracts, employee and contractor agreements, and a short description of the products and the plan for the next few years. From there we interview the people who build and sell, because that is where unprotected assets and hidden risks usually surface. Within the agreed timeline, often two to six weeks for an initial audit or diligence review depending on size, we deliver written findings and walk through them with your leadership. Ongoing counseling then runs on a regular cadence, such as a quarterly portfolio review plus on-call advice when a launch, a hire, or a competitor's move raises a question. Opinion letters run on their own schedule, set at the outset based on the number of patents, marks, or works involved.

Companies We Counsel

Our counseling clients are mostly companies whose value sits in technology and brands: software and SaaS businesses, hardware and device makers, consumer product companies, and founders getting ready for a first institutional round. We also advise investors and acquirers who need an independent read on a target's IP, and established companies whose portfolios grew by accumulation rather than design. Founders tend to call us before a financing or a launch, when an investor's diligence checklist asks about assignments and open source. In-house counsel tend to call when a portfolio has outgrown the person managing it, or when a business unit needs an opinion before committing to a product. We represent clients nationwide from offices in Washington, DC, and Knoxville.

Flat Fees And Written Estimates

Defined work is priced as a flat fee. An IP audit for a company of a given size, a trademark clearance opinion, a portfolio docket review, or a standard set of invention assignment and contractor agreements each comes with a fixed price, a stated scope, and a turnaround date, so you know the cost before we begin. Open-ended work, such as a freedom-to-operate opinion across a crowded patent field or diligence on a large acquisition target, is scoped first and estimated in writing, with the assumptions behind the estimate stated plainly. Ongoing counseling can run on a monthly arrangement for companies that want regular access. The right time to call is before a launch, a key technical hire, a financing, or a deal, while the options are still open.

Frequently asked questions

No. We do not prepare or prosecute patent applications or respond to office actions. We handle the strategy around patents: deciding what deserves protection, giving infringement, validity, and freedom-to-operate opinions, managing portfolios, and handling licensing and litigation. When a filing makes sense, we coordinate with patent prosecution counsel and make sure the application fits the business plan. We do handle trademark and copyright registration directly.

Earlier than most do, ideally before the first outside developer writes code and before the company name is printed on anything. The cheapest fixes are a signed invention assignment from every founder and contractor, a clearance search on the name, and basic confidentiality practices. Investors will ask about all three during diligence, and correcting gaps after the fact usually costs more and can delay a closing.

A freedom-to-operate opinion analyzes whether a product or process is likely to infringe unexpired patents held by others in the markets where you plan to sell. It involves searching for relevant patents, construing their claims, and comparing them to your design. The result is a written assessment of risk, with options such as design-arounds, licenses, or validity challenges where a patent looks like a real obstacle.

It helps, but it is not a shield. Under 35 U.S.C. § 298, failing to get an opinion cannot be used to prove willfulness, and after Halo Electronics the question turns on your culpability at the time of the conduct. A competent, timely opinion from counsel is strong evidence that you acted in good faith, which matters when a court decides whether to enhance damages under § 284.

We collect your registrations, applications, key agreements, and employee and contractor paperwork, then interview the people who build and sell your products. We map each asset to the business, check ownership and chain of title, flag lapses and upcoming deadlines, and identify unprotected assets and third-party risks. You receive a written report that ranks the findings and recommends next steps with estimated costs.

We review it against your current products and markets on a regular cycle. Patents that no longer cover anything you sell or license may not be worth their next maintenance fee, and trademarks for retired products may not be worth renewing. Before anything is dropped we check whether the asset has licensing or sale value, since a patent you no longer practice can still be worth something to someone else.

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Defined work at a fixed price, with the scope, turnaround, and fee stated up front.

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