Practice Areas

At Tumey IP, we fully understand that the profitability of an organization is tied to its ideas. In today’s world, that profitability is often tied to the international community as well. A wide range of skills is necessary to protect such ideas worldwide and bring them to profitability.

Our professionals provide a wide breadth of experience and skills to successfully represent and strategically guide organizations from protection to profitability from their ideas. Most large law firms cannot provide our level of service on a personal level, and most small law firms cannot provide our broad experience and expertise.

PROSECUTION PRACTICE

Professionals of Tumey IP are licensed to practice before the United States Patent and Trademark Office. This aspect of the practice involves the drafting and prosecution of applications for patents, trademarks, and copyrights in the United States and foreign countries. Our international practice is a vibrant part of Tumey IP, and our professionals are involved daily on prosecution matters all over the world.

TRANSACTIONAL PRACTICE

Tumey IP provides services in structuring, drafting, and negotiating intellectual property transactions. Such transactional practice includes intellectual property licensing, technology transfer agreements, consulting agreements, development agreements, and manufacturing agreements.

STRATEGIC COUNSELING

Counseling clients concerning intellectual property protection and exploitation is a large part of Tumey IP’s practice. Such strategic counseling includes intellectual property valuation, intellectual property audits, licensing royalty audits, freedom-to-operate analysis, rendering opinions on patent validity and non-infringement, advice on international strategies, portfolio review, advice on portfolio growth and profitability, and trademark and service mark clearance. Tumey IP also provides advice on the selection, design, and use of trademarks and service marks; recommendations on the protection of inventions; and counseling with respect to trade secret protection.

LITIGATION PRACTICE

The Firm understands that the first priority is to resolve disputes without the need for litigation. However, we understand that in some instances litigation is necessary to resolve disputes. We have been involved in breach of contract, trademark, trade secret, and patent litigation. Our attorneys have also served as expert witnesses on intellectual property law in numerous intellectual property lawsuits. The Firm has also served as local counsel in intellectual property litigation and commercial litigation. In addition, Tumey IP has handled appeals to the Federal Circuit.

POST-GRANT PROCEEDINGS

Even though a patent or trademark registration has been granted, such grants are not guaranteed. The protection provided by a registration can be limited or even terminated by post-grant proceedings. In some instances, post-grant proceedings have been seen as an alternative or a supplement to litigation.
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At Tumey IP, we have been involved in all matters of post-grant proceedings such as re-examinations, cancellation actions, oppositions, and inter partes reviews. We have represented clients on the offensive in post-grant proceedings and have also defended clients on such matters. With our extensive international practice, we have been involved in post-grant proceedings in many countries around the world.

MEDIATION

Mediation can be a more economical and satisfactory method of resolving disputes than litigation. In the mediation, both sides of the dispute should have a fair opportunity to set forth their side. A mediator is a neutral party that works with both sides in a legal, professional manner. The mediator is respectful of the personalities and confidential matters involved and works with the parties to bring a successful resolution to the dispute.
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David Wooten of Tumey IP is a Certified Mediator by the A.A. White Dispute Resolution Center. Along with his very strong technical and science background, David’s experience as a successful patent litigator and trial attorney places him in a consummate position to facilitate parties to resolve their differences outside of the courtroom with a resolution that satisfies both parties.