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Intellectual Property

Overview

Nutter clearly understands that intellectual property assets are often the cornerstone to a client’s success--and survival. Our efforts to protect, enhance, leverage or capitalize on those assets can literally help clients to change the world, especially in life sciences and technology. It is a big reason that we do what we do.

Because of our passion for what we do and our commitment to providing value for the money invested in our services, we work to understand every client’s business and how our efforts as legal counselors and advocates can help that business.

We also deliver value by constantly refining our own processes and maximizing our efficiency, avoiding wasted steps and duplication of efforts. In addition, we staff our projects leanly, often using just one partner and one associate on a task. The partner-to-associate ratio at Nutter enables significant partner level attention on each project and superior associate training and satisfaction. Our firm has ranked highly in those categories in national surveys. We also have low associate turnover, so clients can feel confident that there won’t be a revolving door of lawyers assigned to their projects.

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Our Team

Our attorneys and technical specialists are: 

  • Experts in the federal and state laws that protect intellectual property, such as the federal patent, trademark, and copyright statutes, and trade secret and unfair competition laws; 
  • Experienced in administrative procedures that are unique to intellectual property assets, including patent interferences and trademark oppositions; and 
  • Experienced in litigating patent, trademark, and copyright disputes, as well as unfair practices, employment and confidentiality agreements, including non-competition and non-disclosure covenants.

Nutter has also been: 

  • Ranked as a tier one firm nationally and a tier one firm in Boston by U.S. News & World Report for Patent Law; 
  • Ranked as a top-rated firm in The International Patent Law Survey; 
  • Named as a “Go To” patent counsel in IP Law & Business; and 
  • Named as a “Go To” patent counsel in Corporate Counsel magazine.

Who We Represent

We represent global corporations, mid-market and small companies, major universities and research institutions, inventors, investors and entrepreneurs in a wide variety of IP matters.

As a result of our IP work, we are educated about a great many industries in which our IP clients compete, including: 

  • Medical devices; 
  • Biotech and pharmaceuticals; 
  • Computer hardware and software; 
  • E-commerce; 
  • Energy, both alternative and traditional; 
  • Financial services, including banking, investment banking and insurance; 
  • Manufacturing, wholesaling and retailing; 
  • Optics and laser technology; and 
  • Specialty chemicals.

What We Do

Nutter’s intellectual property team is equipped to handle all of your IP needs. Our clients call upon us to help them design and execute strategies for protection, enhancement or leveraging of their patents, trademarks, copyrights and trade secrets.

We help clients to unlock the value of their IP as well, creating revenue streams from licensing and sales. Clients also look to us for assistance in developing IP triage strategies, which can determine the IP assets that should be protected, renewed, or bolstered and the ones that should be licensed, sold or abandoned for optimal return on investment.

We also perform IP docketing and management services for clients, ensuring that they do not miss important filing or renewal dates, and we monitor filings with the U.S. Patent and Trademark Office (the “PTO”) for legally objectionable actions by competitors.

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Representative Matters

Representative Matters

  • Obtained Summary Judgment of Invalidity for Life Science Company Accused of Patent Infringement

    Our client, a life sciences company, was accused by a competitor of patent infringement relating to an insertion method for a medical device. After briefing and a hearing, the Court disposed of the case on summary judgment, finding the patent-in-suit obvious as a matter of law.

  • CIRCOR International, Inc.

    Acquisition of Critical Flow Solutions
    $210 million

  • Strategic Counseling for Successful Exit

    Developed strategic patent portfolio for early stage emerging medical device company focused on minimally invasive wound closure. Defended company in due diligence evaluation by prospective investors. Asserted patents against large medical device company, resulting in successful exit for investors through sale of company assets to the competitor.

  • Negotiation of early settlement of patent infringement suit

    Negotiation of an early settlement of a patent infringement suit whereby client agreed to re-design its product. Case was dismissed with no payment of damages.

  • Patent Prosecution and Portfolio Development (medical)

    Provided strategic advice on the development and management of robust patent portfolios to help medical device companies present a significant entry barrier to competitors. These companies include DePuy Spine, Ethicon Endo-Surgery, and DePuy Mitek, all Johnson & Johnson companies.

  • Patent Prosecution and Portfolio Development (chemical)

    Successfully designed and prosecuted large patent portfolio directed to environmentally friendly pesticides.

  • IP Strategy

    Develop and implement strategic intellectual property strategy plan for emerging company in the field of tissue ablation.

  • Market Clearance

    Analyzed claims of third party patents, and provided strategic counseling and advice to major medical device companies in connection with planned commercial launches. Products include a broad range of surgical devices in various fields, including bariatrics, spinal surgery, soft tissue fixation, neurosurgery, nutritional products, contact lenses, and pharmaceuticals.

  • Litigation Support and Strategy

    Developed strategy and provided litigation support for a herbicide manufacturer that successfully enforced IP rights against two competitors, resulting in early favorable settlements.

  • IP Due Diligence

    Provided IP due diligence counseling for lead investor syndicate of institutional investors for $20+ million series B investment in a clinical diagnostic company.

  • IP Due Diligence

    Provided IP due diligence counseling for lead investor syndicate of investors for > $25+ million series C investment in a neuro stimulation company.

  • Strategic IP Counseling

    Devised a strategy, and provided strategic counseling and support of successful oppositions of competitor patent applications in Australia and Europe.

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