Intellectual Property & Technology

Owning and operating a business of any size in the 21st century means managing – and protecting – intangible intellectual property assets, as well as personnel, physical plants and materials. Masuda Funai attorneys work with companies and entrepreneurs on the development, protection, sale, transfer and licensing of intellectual property, inventions and technology, proprietary information and business method processes, across the country and around the world.

We counsel international and domestic companies in the negotiation of technology joint ventures, granting and obtaining patent licenses and securing technology transfer agreements of all descriptions. Clients in diverse industries also retain Masuda Funai IP lawyers to develop and enforce trade secret policies, including the prosecution of misappropriation claims against former employees and third parties in state and federal court.

Business clients – particularly those engaged in global and national distribution and sales – rely on our attorneys for information technology and e-commerce counsel, advice and representation in commercial contracts and disputes.

Masuda Funai's experience encompasses software and entertainment industry applications, as well. Masuda Funai has advised clients in negotiations with major motion picture studios and other trademark and copyright owners for character and storyline rights in connection with the development, licensing and sale of extremely popular and financially successful computer, video and arcade games. The IP Group has extensive experience in obtaining, licensing and prosecuting trademarks, in opposition proceedings and handling infringement claims for today's multinational, state-of-the-art intangible products and services.

If you have any questions or would like further information about Masuda Funai's Intellectual Property & Technology practice, please contact George H. Kobayashi at 312.245.7500 or via e-mail at gkobayashi@masudafunai.com.

RANGE OF SERVICES AND EXPERIENCE

Intellectual Property Management.

  • Identification, protection and management of trade secrets, proprietary processes or practices, patents, trademarks, copyrights and Internet domain properties
  • Conduct corporate audits or inventories of intangible assets
  • Draft, initiate and enforce IP, trade secret and privacy policies and procedures
  • Conduct training for management and employees on how to implement trade secret protection policies, including confidentiality, non-disclosure, works-for-hire and non-competition agreements
  • Protect clients' investments in research and development by arranging patent searches and prosecutions with respect to inventions and improvements
  • Technical evaluations, including pertaining to the computer, electrical, and mechanical arts
  • Trademark, trade name, corporate name and registrations searches and prosecutions
  • Appearances before the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board
  • Maintenance and renewal of registered trademarks and service marks

IP Litigation, including Patent Litigation.

  • Represent clients in enforcement of their rights and defense against claims of others – from the initial "cease and desist" letter, to the conclusion, whether by settlement, mediation or litigation
  • Represent clients in patent litigation, including federal court and International Trade Commission actions
  • Represent clients before the U.S. Patent and Trademark Office in post grant proceedings, including inter parte reviews
  • Provide pre-litigation counsel, technical reviews and opinions of counsel in support of litigation or anticipated litigation
  • Litigate controversies and disputes regarding unfair competition, patent/trademark infringement, trade dress, misappropriation, counterfeiting, trademark dilution, domain name dispute and comparative advertising claims and proceedings
  • Additional representation in prosecution of claims against departing employees improperly using sensitive, hard-earned customer intellectual property and proprietary data and counterfeiting by unauthorized product sellers

Licensing and Technology Transfer.

  • Execute intellectual property "due diligence" in connection with acquisitions, sales and contract negotiations with regards to the transfer or apportionment of intellectual property rights in commercial mergers and acquisitions, distribution and sales arrangements or technology procurement
  • Negotiate licenses to, and assignments of, trade secrets, know-how, trademarks, patents, software and other intangible assets
  • Advise regarding territories, exclusivity, fees or royalties, technical assistance or support, enhancements, infringement indemnifications and escrows – with particular understanding of the nuances of obtaining or granting exclusive rights for cross-border territories

Internet and Electronic Commerce.

  • Identify and address emerging legal issues, such as user privacy, allocation of territorial rights for "cyberspace" sales and risk management of tax and legal action in remote jurisdictions
  • Prepare website terms of use, privacy and security policies and other "clickwrap" agreements
  • Counsel on e-mail practices, metatag, framing, linking, cybersquatting, contracting for web development and hosting services and other Internet issues

Information Technology Services.

  • Negotiate development, integration, implementation and maintenance agreements for ERP, CRM, database, website and other types of information system projects with respect to key terms (such as milestones, service levels, warranties, work product ownership and change management) for business clients that develop and market information technology products or services, such as hardware, software or consulting

Technology Ventures and Alliances.

  • Assist in extensive planning, discussion and documentation necessary for formation of strategic partnerships and technology joint ventures, with singular experience in heavy industry and manufacturing
  • Counsel clients on and negotiate all aspects of investments in technology start-ups, joint ventures, research collaborations and strategic alliances, particularly where the partners are of different nationalities and cultures
  • Develop contracts in connection with universities and private research foundations in licensing policies and procedures as well as ownership


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Michael S. Golenson
Senior Associate
Office: Chicago
Email:  mgolenson@masudafunai.com
Phone:  312.245.7529

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Masanari Katsumi
Associate
Office: Chicago
Email:  mkatsumi@masudafunai.com
Phone:  312.245.7500

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Steven L. Katz
Principal
Office: Chicago
Email:  skatz@masudafunai.com
Phone:  312.245.7500

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George H. Kobayashi
Principal
Office: Chicago
Email:  gkobayashi@masudafunai.com
Phone:  312.245.7500

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Monika R. Oyama
Associate
Office: Chicago
Email:  moyama@masudafunai.com
Phone:  312.245.7500

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Joseph S. Parisi
Principal
Office: Schaumburg
Email:  jparisi@masudafunai.com
Phone:  847.734.8811

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Stephen M. Proctor
Principal
Office: Schaumburg
Email:  sproctor@masudafunai.com
Phone:  847.734.8811

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Nancy E. Sasamoto
Principal
Office: Chicago
Email:  nsasamoto@masudafunai.com
Phone:  312.245.7500

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David J. Stein
Associate
Office: Chicago
Email:  dstein@masudafunai.com
Phone:  312.245.7474

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Jiwon Juliana Yhee
Associate
Office: Chicago
Email:  jyhee@masudafunai.com
Phone:  312.245.7500

  • Advised foreign trade agency with respect to the development and implementation of an interactive trade promotion and partner selection website.

  • Advised foreign-based industrial equipment company with foreign national employees regarding compliance with U.S. Department of Defense contractor regulations on access to classified information.

  • Counseled a Silicon Valley VoIP hardware company on all business matters, including its distribution, licensing and mergers and acquisition projects.

  • Negotiated worldwide software licensing and distribution arrangements, including for a transaction required by U.S. antitrust authorities in connection with clearance of a pending merger of leading semiconductor equipment companies.

  • Presented intellectual property and confidentiality protection training program to senior management of factory automation company. Provided employee policies regarding ownership and use of corporate technology.

  • Represented a leading Asian software distributor in its negotiations to be the preferred and master distributor in a major territory for an internationally recognized business intelligence software company.

  • Represented a leading IC chip assembler in the negotiation of its investment in, and research collaboration agreements with, a Sunbelt start-up formed to patent, develop and market the spherical semiconductor.

  • Represented a pharmaceutical company with respect to its investment in, exclusive distribution rights from and research collaboration agreement with a Route 128 biotechnology company developing new platform for sustained release of protein drugs.

  • Represented a printing chemical company in prosecuting patent infringement claims against a competitor.

  • Represented a start-up company with a proprietary plasma pyrolysis waste treatment technology, including with respect to patent protection, strategic investments, technology licenses and demonstration projects at host medical facilities.

  • Represented a variety of information technology consulting and staffing firms in development of their professional services agreements for customers and engagement agreements for independent contractors.

  • Represented an international factory automation company in the filing of a domain name dispute arbitration proceeding before the World Intellectual Property Organization.

  • Represented licensor office furniture company in negotiation of grant of exclusive North American patent, know-how and trademark license for ergonomic chair.

  • Represented well-known foreign consumer products company in negotiation of grants of exclusive North American trademark licenses to separate power tool and outdoor equipment companies. Negotiated related website and domain name cooperation arrangements.

  • Advised industrial equipment manufacturer of sophisticated machine tools with dual commercial and military applications regarding compliance with U.S. export control regulations for purposes of sales into certain Asian countries.