The firm’s Intellectual Property practice area traces its roots in Western New York back to the 1890s.  Today, we represent numerous Western New York clients, as well as businesses based throughout the United States and in many foreign countries.

Our client experience includes retail, consumer goods, office products and high technology. Our clients’ technologies include neural networks, integrated optoelectronics and gradient lens technology, dental and medical components, biochemical and biomedical systems, blood sensing technologies, animal and plant genetics, steam generation, agricultural hardware and systems, and advanced materials applications.

The legal services provided by the firm’s Intellectual Property attorneys are comprehensive. We assist clients in acquiring patents, trademarks, and copyrights, and have extensive experience negotiating and drafting licensing agreements in various contexts relating to many different types of properties. We provide strategic counseling to assist our clients in maximizing the potential of their IP portfolios, including the assessment of potential threats, and helping to ensure that conflicts are avoided relative to the IP rights of others.

Our Clients

  • Businesses (ranging from Fortune 500 companies to start-up ventures)
  • Entrepreneurs
  • Investors
  • Individual Inventors
  • Major Motion Picture Studios

Our Experience

Intellectual Property Litigation. Intellectual property rights disputes are handled by members of an esteemed team of litigation attorneys experienced in representing clients in complex intellectual property litigation in Federal and State courts across the nation, including trials, evidentiary hearings (Markman, preliminary injunctions) and appeals. We also represent clients before the United States Patent & Trademark Office.

Members of the team include fellows in the American College of Trial Lawyers, two past presidents of the Rochester Intellectual Property Law Association, and a former president of the Central New York Patent Law Association.

We represent businesses, entrepreneurs, investors and individual inventors in matters pertaining to the protection of intellectual property – in the form of patents, trademarks, trade dress, copyrights and trade secrets. Our clients include those whose intellectual properties have been infringed upon, as well as those accused of intellectual property infringement.

Conflicts relating to false advertising and defamation (libel and slander) are routinely handled by our intellectual property litigation attorneys, in addition to cases involving franchising rights, trademark infringement, and various issues in E-Commerce, such as domain-name disputes. 

We are frequently called on to defend the enforceability of confidentiality agreements and post-employment non-competition agreements designed to safeguard the misappropriation of trade secrets and violations in the area of unfair competition. We also bring forth customs actions related to the monitoring and importation of infringing goods.

While we have been very successful in pursuing cases within the traditional court system, we proactively pursue negotiated settlements, mediation and other alternative dispute resolution procedures whenever appropriate.

Acquiring Patents, Trademarks & Copyrights. The Intellectual Property practice area of HSE and its predecessor firms have assisted some of the nation’s greatest companies in protecting their inventions and trademarks. For example, in 1926 we helped Eastman Kodak Company obtain U.S. Patent No. 1,606,447 for the photographic shutter. That same year, we assisted Edward Bausch and his company, Bausch & Lomb Optical Company, in obtaining U.S. Patent No. 1,612,693 for a magnifying glass.

The IP practice’s trademark roots run similarly deep, with one of our predecessor firms having obtained U.S. Trademark Registration No. 85,423 for the mark “KODAK” in 1912 for the Eastman Kodak Company, and the mark “POLAR” in 1911 for use in connection with evaporated apples on behalf of the Seneca Dried Fruit Company.

Today, our clients range in size from small start-ups to multinationals; our commitment to securing and managing their intellectual property portfolios is as deep as our historical heritage.

  • Patent Law
  • Patentability investigations and opinions
  • Maintenance of patent rights throughout the world
  • Trademark Law
  • Registration of trademarks and service marks in the US PTO and foreign countries
  • Maintenance of trademark rights throughout the world
  • Copyright Law
  • Registration with the U.S. Copyright Office
  • Investigations to determine ownership and registration status

Intellectual Property Licensing. Licensing is an important component of intellectual property management, and our attorneys have extensive experience negotiating and drafting licensing agreements in various contexts relating to many different types of properties.

We are adept at handling technology transfers, and have negotiated technology licenses under trademarks, patents, copyrights and trade secrets. For both our domestic and international clients, we have managed licensing negotiations of their patent and trademark portfolios.

Our knowledge in the area of licensing has served our clients well as they confront various business needs including mergers, acquisitions, settlements in infringement cases, and demand for revenue enhancement.

Intellectual Property Counseling. Intellectual property rights require legal protection and consideration in the daily operation of a business and during the implementation of a special project.

The attorneys in our Intellectual Property Practice Area provide strategic counseling to assist our clients maximizing the potential of their IP portfolio, including the assessment of potential threats, and helping to ensure that conflicts are avoided relative to the IP rights of others.

We can produce comprehensive opinion work using our knowledge of complex subject matter, technical investigation capabilities, strong legal analysis skills and practical experience. All of these abilities, taken together, allow us to anticipate changes in the legal landscape and anticipate potential conflict.

We can also assist our clients in technology assessment, patent procurement, due diligence, and licensing and franchising issues.


This website presents only general information not intended as legal advice. Although we encourage calls, letters and emails from prospective clients, please keep in mind that merely contacting Harter Secrest & Emery LLP (HSE) does not establish an attorney-client relationship between us. Confidential information should not be sent to HSE until you have been notified in writing by HSE that a formal attorney-client relationship has been established. Information sent to us before then may not be treated as confidential by HSE or the court.

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