Practice Areas

Practice Areas

The attorneys of Yudell Isidore have extensive experience in providing legal representation and counsel in the areas of patent, copyright, trademark and trade secret law. The firm specializes in three key practice areas of intellectual property law:

Patent
Portfolio Development

The attorneys of Yudell Isidore have extensive experience in providing legal representation and counsel in the areas of patent and trademark law. Our attorneys provide comprehensive legal counsel on patent, copyright, trademark and trade secret issues, including:

  • Patent & Trademark Procurement
  • IP portfolio enhancement and capitalization
  • Patentability, validity and infringement opinions

Patent Procurement

Yudell Isidore  assists companies determining the availability and scope of patent protection, procuring domestic and international protection for such intellectual property assets, and ensuring long-term maintenance of intellectual property assets throughout the world. Yudell Isidore’s attorneys are educated and experienced in numerous engineering and technological arts, and are experienced in patenting innovations in many fields of technology. Moreover, many of our attorneys have the added advantage of previously having served in-house at both start-up and large technology companies.

Enhancement and Capitalization

Yudell Isidore partners work closely with clients, developing a keen understanding of their business. Utilizing this knowledge, our lawyers develop a patent strategy tailored to the client’s business objectives. Based upon this strategy, our attorneys provide counsel regarding acquisition, use and maintenance of patent assets.

For example, our patent attorneys can assist in portfolio management by performing periodic audits to provide a cost/benefit analysis of maintaining each patent asset. Our patent lawyers are also skilled in negotiating and drafting license, vendor purchase and sale, joint venture, franchise and other agreements to protect and profit from patents, company logos and trade names, copyrights, trade secrets, trademarks, and celebrity likeness and image.

Yudell Isidore’s patent attorneys also provide due diligence, including full title searches, to support acquisition and divestiture of companies and patent assets. Our attorney’s record security interests in patent assets and, through the firm’s perpetual docketing system, ensure that underlying patent assets are maintained for the life of the security interest. Our attorneys assist financial experts in developing detailed models for evaluating patent assets for risk management, collateral, gift evaluation, acquisition and divestiture, and initial public offerings.

Enforcement and Defense

Yudell Isidore’s attorneys collaborate to enforce our clients’ patent rights through negotiation, mediation, arbitration or litigation. We provide assessments of our clients’ patent assets, as well as third party patent assets, by performing validity and infringement analyses and constructing damage models.

Trademark Procurement

Yudell Isidore  partners advise companies regarding the development, enforcement and licensing of their marks, including company and product names and logos. Our attorneys perform clearance searches to assess the risk of adopting marks, and prepare and prosecute applications for marks before the United States Trademark Office.

Licensing, Technology
Transactions  & Patent Monetization

Our attorneys focus on providing services to established companies, start-ups and entrepreneurs with the business opportunities created by advances in technology, including the licensing, acquisition and sale of intellectual property and technology.

Drawing from our specific industry knowledge and real-world experience, our lawyers efficiently and successfully close our client’s technology transactions. Yudell Isidore’s attorneys are educated and experienced in numerous engineering and technology fields, and many have the added advantage of previously having served in-house at both start-up and large technology companies. As a result, we offer efficient, experienced teams that have successfully closed technology transactions and partnerships with both new, high-tech ventures and large international corporations.

Our services include:

  • IP and technology licensing of software, hardware, electronics, manufacturing designs and processes, digital content, technical know-how, trade secrets, patents, copyrights, and trademarks.
  • Drafting and negotiation of complex research, development and partnering agreements, such as evaluation, R&D, joint development, confidentiality, manufacturing, buy-sell, distribution, e-commerce, marketing and consulting agreements.
  • Evaluation, structuring, due diligence, negotiation, and documentation of major domestic and international transactions involving all types of technology and IP assignment, investment, acquisition, divestiture, distribution, and strategic licensing issues.

Partnering

Our clients’ business arrangements often involve intellectual property from diverse parties. Yudell Isidore’s lawyers are experienced in structuring, drafting, and negotiating complex joint venture, joint marketing, joint development, strategic alliance, manufacturing, buy-sell and collaboration research arrangements. This skill also extends to agreements covering all aspects of product distribution, including distributors, sales representatives, original equipment manufacturers (OEMs), value-added resellers (VARs), channel allies, and franchisees.

Licensing and Technology Transfer

Our attorneys are experienced in all aspects of technology transfer arrangements, from initial due diligence to contract negotiation and oversight of contract execution to ensure a smooth transfer of the technology. To specify the license rights or technology being transferred, we assist in the development and negotiation of an effective contract that clearly defines areas such as scope of license and ownership, compensation, performance standards, security and confidentiality, auditing, reporting, business resumption and contingency planning, subcontracting, sub-license rights, dispute resolution, and indemnification.

Patent Sales and Licensing

Patents are a complicated asset whose value depends upon a number of factors including the strength and breadth of the claims, whether or not the invention is being practiced today (or the likelihood that it will be in the future), and the size of the impacted market and related revenues. There are also several factors that can decrease the value of a patent including encumbrances such as licenses, similar prior art, or issues with the prosecution history. A thorough understanding of these factors from a business, legal, and technical perspective will ensure that we realize the maximum value of your assets.

Yudell Isidore provides professional intellectual property brokerage services, which overcome the traditional barriers to patent transactions including:

  • The complexity of the patent sales process
  • The legal strength of the patent assets
  • Valuation of the assets
  • Encumbrances and other factors such as licenses
  • A strong understanding of the buying market

Yudell Isidore’s deep intellectual property brokerage experience and rigorous patent sales process enables us to:

  • Effectively coordinate business, technical and legal skills to properly value assets
  • Utilize our network to reach the broadest set of potential buyers
  • Develop reseller marketing collateral
  • Set aggressive deadlines and manage the bidding process
  • Successfully facilitate the closing of transactions at the highest possible price

Intellectual Property
Counseling

Technology and IP Due Diligence

Our attorneys review intellectual property rights and issues and conduct IP due diligence investigations. We provide these services in connection with financings, acquisitions, and other business transactions involving the direct or indirect acquisition or valuation of intellectual property. We also perform due diligence work for businesses seeking to avoid potentially blocking patents and for those seeking to acquire intellectual property portfolios.

Intellectual Property Protection

Our attorneys assist companies in developing an IP strategy for enhancing their technologies value and strengthening their market position. We determine the availability and scope of patent, trademark and copyright domestic and international for such intellectual protection, procure protection property assets, and ensure long-term maintenance of intellectual property assets throughout the world. Along with the development and protection of intellectual property rights in patents, we also develop and protect intellectual property rights in trademarks, service marks, trade names, trade dress, copyrights, trade secrets, and other proprietary information.