Intellectual Property Counsel for Technology Companies
As a technology company grows, its brand, software, content, know-how, and contractual rights become assets that customers, investors, and acquirers will examine closely. Sutter Law helps companies protect, license, commercialize, and diligence those assets.
Our IP practice focuses on trademarks, copyrights, trade secrets, licensing, technology transactions, ownership documentation, and IP issues that arise in financings and M&A.
Trademark Clearance, Filing, and Portfolio Management
A trademark program should protect the brands the company actually uses and plans to expand. We assist with clearance, filing strategy, prosecution, renewals, ownership changes, and portfolio management in the United States, and coordinate international filings where needed.
USPTO Office Actions, Oppositions, and Enforcement
When the USPTO raises a refusal or another party challenges a mark, the response strategy can determine whether the application proceeds and how much the company must change its branding. We prepare office-action responses and advise on opposition, coexistence, and enforcement matters.
Copyrights and Content Rights
Software, website content, marketing materials, documentation, and other original works can create valuable copyright rights. We help companies document ownership, register appropriate works, structure licenses, and address infringement or unauthorized use, including questions about AI-assisted works.
IP Licensing and Technology Transactions
Licensing agreements determine who may use technology, for what purpose, in which markets, and on what economic terms. We draft and negotiate software, SaaS, OEM, reseller, data, content, and technology transfer arrangements with attention to ownership, restrictions, improvements, support, confidentiality, and liability. See also our work on AI licensing agreements.
Trade Secrets and Invention Assignment
Trade secret protection depends on reasonable measures to preserve confidentiality. We help companies use employee and contractor invention-assignment agreements, confidentiality terms, access controls, and commercial agreements to protect proprietary information and establish a clear chain of title.
IP Due Diligence for Financings and Acquisitions
Investors and buyers want evidence that the company owns the technology and brand it claims to own. We review founder, employee, and contractor assignments, licenses, open-source issues, trademark and copyright records, and material IP agreements, and help correct gaps before diligence becomes a deal issue.
Why Companies Choose Sutter Law
Experienced Business Counsel
Our attorneys work on the corporate, financing, commercial, and transaction issues that arise as private companies grow, allowing related issues to be handled in a coordinated way.
Direct Attorney Involvement
Clients work directly with the attorneys responsible for the matter. The team is structured to keep senior lawyers involved rather than passing routine responsibility through multiple layers.
Bay Area and California Focus
We serve companies, founders, investors, and owners throughout the Bay Area and California, while regularly handling matters involving Delaware entities, national counterparties, and international operations.
Practical, Transaction-Oriented Advice
We focus on the legal issues that affect economics, control, timing, and execution, and coordinate with tax, accounting, financial, and other advisors when a matter crosses disciplines.
Frequently Asked Questions
What is a USPTO office action?
An office action is a communication from the USPTO examining attorney raising legal or procedural issues with a trademark application. The applicant must respond by the applicable deadline to keep the application moving.
Why does IP matter in an acquisition?
A buyer will confirm that the target owns or has adequate rights to the technology, content, brand, and other IP needed to operate the business. Gaps can delay closing, change deal terms, or require remediation.
Do contractors automatically assign IP to the company?
Not necessarily. Companies should use written agreements that clearly address ownership of work product, inventions, code, and other intellectual property.
When should we clear a new trademark?
Before investing heavily in branding, domains, marketing, packaging, or launch. Clearance can identify conflicting rights and inform filing strategy.
Can you handle international trademark portfolios?
We can manage U.S. strategy and coordinate international filings and local counsel where foreign prosecution or enforcement is required.
Intellectual Property Legal Resources from the Sutter Law Blog
Our attorneys publish practical guidance on corporate, financing, transaction, employment, privacy, intellectual property, and business-law issues. Recommended reading:
- Trademarks 101: What You Need to Know
- Trademark Tips for Startups
- Joint Ownership of Trademarks
- Assignment of Trademark Rights in an Asset Purchase
- Protecting Your Trademark in the AI Era
- Do I Have Copyright in Works Created With AI?
- Can I Use Copyrighted Works for Generative AI Training?
- How to Cope With Copyright Trolls
- IP Protection for AI Algorithms
- When Should I Transfer My IP to My Startup?
- What You Need to Know About CIIAAs
- Protecting Trade Secrets at Hiring and Termination
Ready to Talk?
Protect your brand and technology. Schedule a consultation or call 415-341-2888.