Bowie & Jensen LLC has an extensive intellectual property practice working with businesses and organizations in both planning, organization, and litigation matters. Intellectual Property litigation services are provided in those cases where parties are disputing their rights to either take an action free of infringement, or to enforce some intellectual property right against someone who is infringing such right.
Bowie & Jensen provides IP litigation services in all federal courts, and in state courts in Maryland, District of Columbia, Virginia and New York.
Patents and Copyrights may only be enforced in federal courts, or in federal agencies such as the United States International Trade Commission. Trademarks and Trade Secrets are enforced in both state and federal court. Bowie & Jensen lawyers also provide extensive pre-litigation consulting, such as forum selection determination (some cases are better brought in specific courts due to existing case law in that court), likelihood of success analysis, attorney fee budgeting ranges, cease and desist letters, Uniform Dispute Resolution Proceedings (UDRP) relating to domain name disputes, damages analysis and review, and other pre-litigation reviews and assessments.
Bowie & Jensen, LLC offers a comprehensive range of intellectual property protection, consulting, and additional services including:
- Product / Service mark searching - these services involve “pre-searching” a series of ranked words or logos that are possible marks. We rank these marks in order of likely-to-register marks. This search is known as a “drop dead” search, in that we focus exclusively on the US principal and supplemental registers.
- Preliminary searching - once a mark has been selected and is not “dead” – we perform an initial search, which is more in depth to the above search, and includes an email report, with a probable/not probable conclusion on registerability of the mark.
- Compumark review - our preliminary search also discusses a client option to order a Compumark search (this is a service provided by a third party – and is a very comprehensive review of hundreds of databases, and results in a typically 300 or so page report). We review this report and determine likelihood of registerability.
- Filing and prosecution - We file and prosecute the trademark application, typically at the USPTO. We sometimes also file trademarks in individual states, though the benefit of doing this is not often significant.
- Office Action resolution - we perform all services related to responding to examiner office actions, which can range to simple amendments to conform the application to a requirement of the examiner, to full responses to substantive refusals based on for example, likelihood of confusion. These are know as “ex parte” proceedings – because there is no opponent.
- Inter partes actions - An inter partes proceeding is an opposition, or a cancellation proceeding. These proceedings are adversarial – meaning that there are two parties to the proceeding. We engage in all aspects of inter partes proceedings.
- Enforcement, litigation - Bowie & Jensen engages in all forms of trademark litigation, including defense, enforcement, mediation, damage analysis and calculations, and all forms of dispute resolution.
- Title review - we can assist in title review, which includes title clearance on films and books. We do recommend professional title search reports to be ordered, for example, from Compumark.
- Enforcement, defense, dispute resolution and damage calculations - Bowie & Jensen regularly litigates patent disputes in Federal Court. We have litigated and resolved patent disputes, including venue and pre-discovery mediation, as well as conducted Markman hearings. We have engaged in extensive damage calculation analysis in an effort that ultimately concluded one of the longest running patent cases in the Federal District Court for Maryland (17 years). We are very familiar with recent important case law that has issued from the Supreme Court.
- AIA (America Invents Act) consulting - The lawyers at Bowie & Jensen provide all aspects of consulting on the effect of new America Invents Act (AIA) , including but not limited to decisions on pre-filing disclosures (NDAs), licensing, enforcement and joint research agreements.
- Inter partes actions - An inter partes proceeding in the Patent Office can be an action for interference (conflicting claim of ownership or inventorship), or related to any of a number of patent issues where a third party may file documents contesting the validity of (or right to obtain) a patent. These proceedings are adversarial – meaning that there are two parties to the proceeding. We engage in all aspects of inter partes proceedings.
- Bowie & Jensen maintains relationships with many high-quality patent attorneys in virtually every discipline. The firm can assist in the facilitation of patenting inventions and providing counsel in developing relationships with legal counsel in other areas.
Trade Secret Law
- Non-disclosure agreements - We have reviewed, drafted and litigated probably thousands of non disclosure agreements. This is one service where we also offer fixed fees.
- Employment agreements - trade secrets most often are involved in employment relationships and most often are protected, in part, by restrictive covenants (covenants not to solicit, covenants not to compete and covenants not to raid) – and we have negotiated, for both employees and employers, thousands of employment agreements.
- Entrepreneurial issues - often when leaving a company (or when a company is hiring a person from another company) the “knowledge” they have about that former employer is part of the consideration for the hire. How a person accomplishes this transition can be tricky, and often involves their access to and use of trade secrets. Bowie & Jensen lawyers have engaged in all aspects of consulting on navigating through these issues, for both the entrepreneur, and for the employer.
- Trade secret litigation - Bowie & Jensen is well known for trade secret law in Maryland – one of the founding partners litigated Tabs Associates, Inc. v Brohawn, a seminal trade secret case in Maryland. We have litigated many trade secret cases in Maryland and in other states.
- Copyright registration - we assist clients in more complex registration issues (registration of serials, TV shows, films, works that contain third party and public domain content etc)
- Software copyright registration - we regularly register copyrights on software, on both traditional, and rule of doubt (filing of machine code/object code).
- Software escrow - we can hold source code in escrow, though we cannot perform traditional verification processes. We actually recommend DSI/Iron Mountain for escrow services.
- Clearance - we perform clearance review and licensing review for films, books and other content.
Other Intellectual Property Related Services
- Domain name disputes - we have handled numerous domain disputes, from UDRP proceedings, to in-court disputes under the ACPA, 15 U.S.C. Sec. 1125(d).
- Advertising clearance - Commercial advertising often involves many aspects of intellectual property – principally copyright (i.e. use of music, use of ideas based on characters or movies, use of “clips,” use of content on the internet, product placement, use of trademarks and so on). We have reviewed and cleared many advertisements, from online advertising, to TV, radio and print.
- Social media clearance - we have given a seminar “Social Media Marketing Law” to numerous organizations, including the Better Business Bureau, several Chambers of Commerce, user conferences for our clients, the Baltimore Business Journal, and other providers. We regularly review and update ourselves on recent social media marketing law and legal requirements, from compliance with COPPA, the various endorsement blog rules, and other specific law and regulations on social media.
- Information Technology transactions - Bowie & Jensen attorneys have drafted, reviewed and negotiated hundreds of information technology related agreements – anything from business process outsource (BPO), enterprise resource planning (ERP), value added reseller (VAR), Software as a Service (SaaS), Platform as a Service (PaaS), Hardware as a Service (HaaS), teaming agreements, reseller and distribution agreements, every form of licensing agreement and other similar agreements.
- Mergers and Acquisitions - we assist and perform sales and acquisitions of companies that are predominantly intellectual property based – and have concluded hundreds of millions of dollars of purchases and sales of such businesses.
- Licensing - Bowie & Jensen advises clients on every aspect of licensing intellectual property. There is probably no form of license, deal, or structure that we have not reviewed, drafted, developed or closed for a client.