IpHorgan Intellectual Property Lawyers

Our goal is to provide our clients with excellent, efficient, and effective service. We pursue this through focused planning, resilience and relentless drive.

IpHorgan clears, registers, maintains and enforces trademarks worldwide. We prosecute a wide range of engineering and scientific patent applications. Our attorneys have a comprehensive knowledge of copyright law and a detailed understanding of domain name topics, including the technical aspects of domain name management. We also have many years of experience with license drafting and related issues.

Our lawyers have a thorough understanding of U.S. intellectual property law. We are authorized to practice before the U.S. Patent and Trademark Office, the U.S. District Court for the Northern District of Illinois, the U.S. Court of Appeals for the Seventh Circuit, the U.S. Court of Appeals for the Federal Circuit, and the Supreme Court of the United States.

We have a deep knowledge of international practice developed through decades of training and experience. Our attorneys are fluent in major world languages.

Our firm represents some of America’s leading corporations, including companies that specialize in fashion, household products, professional services, recreation, and oil and gas exploration. As well, IpHorgan services some of the world’s largest overseas companies, among them those engaged in the automation, automotive, and consumer electronics industries. And, we provide intellectual property assistance and counsel to some of the music industry’s most popular and influential artists.

WE REPRESENT AMBITION®

Trademarks and Trade Identity

We assist businesses with developing trademarks, securing registrations, maintaining and enforcing trademark rights.

Trademarks are words, signs, designs, colors, shapes, sounds or smells that distinguish the goods or services of one company from those of others.

Representative Projects:

  • Searched, filed, registered, and maintained thousands of trademarks in the United States;
  • Protected client against disastrous reputational damage by successfully enjoining a similarly named overseas company engaged in hiring ex-vets for Middle East conflicts;

Patents and Inventions

IpHorgan reviews new inventions for patentability, drafts and prosecutes applications, enforces issued patents and assists clients to avoid infringing upon others’ rights.

Patents protect the ownership of useful inventions that are new and not obvious to those skilled in the field.

Representative Projects:

  • Negotiated many patent licenses, including two-way grant back licenses, exclusive and non-exclusive licenses, multi-tier royalty licenses, and allocation licenses;
  • Invalidated a competitor’s patent under the America Invents Act’s Inter Partes Review procedure (IPR), becoming one of the first law firms in the U.S. to file and achieve success in the new forum;

Copyrights and Audio-Visual Works

Our services include copyright registration, assignment, fair use, licensing and enforcement.

Copyrights protect original works of authorship in tangible form, such as literary writings, musical compositions, paintings, movies and photographs.

Representative Projects:

  • Registered numerous copyrights claiming literary and musical works;
  • Negotiated licenses to popular music and audio-visual works;

Domain Names and the Internet

Our attorneys are proficient in both the legal and technical aspects of domain name management as well as online fraud and abuse.

Domain names are addresses used to locate websites and/or email accounts through the worldwide web.

Representative Projects:

  • Registered and managed thousands of gTLD and ccTLD domain names;
  • Acquired a crucial dot-com for a multinational client at nominal cost even though the purpose of the transaction became public knowledge during negotiations;

Trade Secrets and Confidential Information

We regularly advise and assist clients with the management of trade secrets and other confidential information.

Trade secrets protect confidential information that is valuable to businesses.

Representative Projects:

  • Drafted and negotiated numerous NDAs and joint-development agreements;
  • Established programs to identify and protect trade secret rights;

Our Global Capabilities

IpHorgan advises its clients on U.S. issues and on the international aspects of intellectual property law. We have a roster of overseas counsel extending to over 200 jurisdictions. We have handled over 70,000 foreign intellectual property cases. We draw on that experience to independently evaluate local counsels’ initial assessments and recommendations. We infuse our knowledge to craft the most efficient solution for each client.

Case Studies

U.S. Litigation – Sometimes A Necessary Tool

Client was losing sales to an ex-dealer. The ex-dealer, despite repeated requests that it immediately stop, continued to display on its exterior a large sign featuring our client’s logo. In addition, the ex-dealer ran newspaper advertisements stating that it was an authorized dealer of our client’s products. Further, the owner disparaged our client’s products to customers entering his store, recommending instead those of our client’s largest competitor.

Our office attempted to reason with the owner, establishing a rapport that seemingly would lead to his agreement to comply with our requests. But then, based in part on advice he received from a retired judge while hunting, the owner broke off all communications with our office.

We sued the ex-dealer and the owner as an individual in the U.S. District Court, alleging trademark infringement, false designation of origin, false advertising, and dilution. Needless to say, the owner settled immediately on terms very favorable to our client.

Fighting Counterfeiters – Resilience And Persistence Demanded

Our target was flooding the Chinese market with counterfeit fixtures. We sued in Foshan, a city close to the Hong Kong border. The counterfeiter denied his goods were copies and claimed to be an innocent licensee. We proved to the court that the license was fraudulent. The marks and goods were virtually identical; there was no doubt about infringement. Judgement in our favor would be a matter of course. But then we received a call from the Court. It had misgivings: it doubted the evidence; it doubted us; and it doubted our case. It was inclined to rule for the defense. The fix was in.

We immediately withdrew the complaint before a ruling could issue.

We learned from our investigations that our subject also sold products in Shenyang which is close to the border with North Korea. We knew from our research that the city had a respected court system. We pursued our case there and refiled. This time we prevailed at first instance; the target appealed to the High Court and again we prevailed.

We then returned to Foshan armed with an iron-clad High Court judgement. We closed the business; froze bank accounts; and recovered damages of over 300,000 rmb’s.

Troubleshooting Patent Applications – Prepared to Persuade

We were instructed to take over a family of pending patent applications. Each case had undergone at least two Final Rejections, four to five prior substantive Office Actions total, with no hint of allowance. The cases were very important to the Applicant. The prior firm handling the cases had a good reputation and experienced patent attorneys. They just could not get the applications through.

We dug deeply into all of the Actions, Amendments, cited art, and other documents in the file history - perhaps thousands of pages of text. We had to figure out where previous arguments had gone wrong and determine how we could overcome them after the invention had received so many rejections. A very high degree of technical detail was involved.

Two different Examiners were handling the cases for the USPTO. We had to convince both Examiners. In each case, after we took over, one further Action issued, and then we achieved allowance.

Our People

Amanda R. Peluse counsels clients ranging from local not-for-profit organizations to multinational Fortune 500 corporations on a variety of issues including trademark conflict resolution, global counterfeiting, brand selection, copyright enforcement and general intellectual property portfolio management. Amanda has successfully prosecuted a wide variety of trademarks globally, from the clearance phase to registration, and has also represented clients in trademark opposition and cancellation actions in jurisdictions throughout the world.

Education:

  • B.A., Princeton University;
  • J.D., DePaul University (Certificate in Intellectual Property, Art & Museum Law).

Admissions:

  • State of Illinois Bar.

Angela Kalsi concentrates on trademark clearance, prosecution, and enforcement. She has successfully represented clients in trademark oppositions, cancellations, and litigation worldwide. She counsels multinational corporations, entrepreneurs, and artists on trademark issues, and she also assists clients with copyright registration and enforcement, domain name disputes, counterfeiting, and customs recordals. Angela is fluent in French.

Education:

  • B.A., University of Michigan;
  • J.D., DePaul University (Editor-in-Chief of the DePaul Journal for Social Justice).

Admissions:

  • State of Illinois Bar.

Carlynn B. Davis assists clients ranging from start-up companies and artists to corporations with world-wide intellectual property portfolios on a variety of issues, including trademark clearance, registration, maintenance, and enforcement, and copyright licensing and enforcement. She also specializes in enforcing client rights against counterfeiters and cybersquatters and managing Criminal anti-counterfeiting actions in China and elsewhere.

Education:

  • B.S., Miami University, Oxford, Ohio;
  • J.D., DePaul College of Law (Certificate in Intellectual Property Law; Legislative Updates Editor for DePaul Journal of Art and Entertainment Law).

Admissions:

  • State of Illinois Bar.

Christopher B. Lay represents multinational corporations in trademark opposition, cancellation, and infringement, copyright infringement, medical device patent infringement, and related litigation matters. He has represented clients in trade secret, class action, and civil rights cases, including a recent appeal in which he obtained reversal and remand for a client whom he represented before the U.S. Court of Appeals for the Seventh Circuit. In addition, Chris regularly counsels clients on trademark, copyright, and other transactional matters. He has taught the Intellectual Property section of legal writing at Loyola University Chicago School of Law.

Education:

  • B.M., DePaul University;
  • J.D., cum laude, Loyola University Chicago School of Law (Certificate in Trial Advocacy).

Admissions:

  • State of Illinois Bar;
  • U.S. District Court for the Northern District of Illinois (including trial bar);
  • U.S. Court of Appeals for the Seventh Circuit;
  • United States Supreme Court.

Daniel Lano concentrates on both domestic and international trademark issues, including international prosecution and enforcement. He counsels both large and small businesses regarding their trademark portfolios. He has experience advising small businesses and aspiring authors regarding trademark and copyright claims. He has also worked with small and large, multinational corporations on trade secret issues.

Education:

  • B.M., New England Conservatory of Music;
  • M.M., Cleveland Institute of Music;
  • J.D., DePaul University College of Law (DePaul Journal of Art, Technology, and Intellectual Property Law Case Notes and Comments Editor).

Admissions:

  • State of Illinois Bar.

Dermot Horgan works closely with state government, medium-sized businesses, Global 500 corporations, and large privately-owned companies on new-product roll-outs, establishment and acquisition of rights, maintenance, enforcement, trademark extensions and migration, local market considerations, and global strategy. His experience covers a broad range of national and international trade identity, copyright, litigation, anti-counterfeiting, and licensing aspects of intellectual property law as well as issues relating to the ownership and protection of confidential data. He has received national recognition for his skills, including being named for his outstanding service in a recent survey of General Counsel at the United States' largest corporations. He is a regular lecturer on IP topics.

Education:

  • B.C.L., University College Cork;
  • Barrister-at-Law, Kings Inns, Dublin;
  • J.D., DePaul College of Law.

Admissions:

  • State of Illinois Bar;
  • New York State Bar;
  • Trial Bar in the Republic of Ireland.

Dmitriy O. Makarov handles anti-counterfeiting, copyright, domain-name, trademark, trade identity, and unfair competition matters. He has been active in all aspects of international trademark law, from managing customs recordals, title updates, and assignment recordals to performing trademark clearance searches, conducting due-diligence portfolio reviews, preparing and prosecuting trademark applications and extensions of international registrations, and investigating misuse. Dmitriy has counseled clients on the proposed new gTLD application process and helped secure usernames for brands on social-media sites. He is fluent in Russian and has an extensive background in business and computer technology.

Education:

  • B.S., North Central College;
  • J.D., DePaul University College of Law.

Admissions:

  • State of Illinois Bar.

Eric Estadt drafts and prosecutes patents and assists clients in a variety of patent-related matters. His technical background includes four years of computer-aided design and drafting.

Education:

  • B.S., University of Pittsburgh;
  • J.D., DePaul College of Law (Treasurer, Intellectual Property Law Society).

Admissions:

  • State of Illinois Bar;
  • U.S. Patent and Trademark Office Bar.

Jeannine Rittenhouse counsels clients ranging from small businesses to multinational Fortune 500 corporations on the searching and clearance of new brands worldwide and on the maintenance, prosecution, protection, and enforcement of their global trademark and domain portfolios. She has represented clients in trademark oppositions and cancellations in multiple jurisdictions and has substantial experience in copyright prosecution, enforcement, and licensing matters. In addition, Jeannine counsels clients on trade identity, domain name, and unfair competition issues. She has frequently guest-lectured for the DePaul College of Law Technology/Intellectual Property Legal Clinic.

Education:

  • B.S., University of Wisconsin;
  • J.D., DePaul University College of Law.

Admissions:

  • State of Illinois Bar.

Jing Zhang assists clients on trademark enforcement, anti-counterfeiting cases, and domain-name disputes worldwide and particularly in China. Jing has vast experience in trademark opposition, trademark cancellation, counterfeiting, cybersquatting, customs registration, and recordal matters. Jing has an extensive background in international cultures and in-depth knowledge about the Chinese social and legal systems. Jing is fluent in Chinese and proficient in Farsi.

Education:

  • B.A., Beijing University;
  • M.A., Washington University in St. Louis;
  • M.S., University of North Texas;
  • J.D., DePaul University College of Law (Certificate in International & Comparative Law; Associate Editor for Intellectual Property Reporter).

Admissions:

  • State of Illinois Bar.

Michael L. Kenaga is the Director of Patents. He is a registered patent attorney and has twenty years of experience that includes advising and counseling large and mid-sized corporations on patentability and protection options, providing infringement opinions, and preparing, filing, and prosecuting domestic and foreign patent applications in the electrical and mechanical arts. Further, Mike has substantial experience in IP due diligence in connection with potential acquisitions of companies. His practice includes license-agreement work and litigation support. He has successfully handled several Inter Partes Review (IPR) proceedings. Michael is a regular speaker and lecturer on issues related to U.S. and foreign patent practice. He is an electrical engineer and, prior to law school, worked for a telecom company and for a military and government contractor.

Education:

  • B.S. in Electrical Engineering;
  • J.D., John Marshall Law School.

Admissions:

  • State of Illinois Bar;
  • U.S. District Court for the Northern Circuit;
  • U.S. Court of Appeals for the Seventh Circuit;
  • U.S. Patent and Trademark Office Bar.

Sean Swidler is a registered patent attorney concentrating on U.S. and international Patent, Trademark, Trade Secret and Copyright matters, including clearance activities, prosecution of applications, and related litigation in federal and state courts, and in administrative proceedings in the United States Patent and Trademark Office. He has prosecuted a broad range of patents, including medical devices, mechanical and electro-mechanical devices along with software and business methods inventions. Sean is experienced in all phases of patent and trademark litigation and has spent time litigating patents, in both federal court actions and inter partes review proceedings, covering multiple technologies, including generic drug applications, medical devices, and electronic payment systems. Sean also assists clients in advertising and promotions matters, including addressing fair use and comparative advertising issues and legal requirements for running sweepstakes and contests. He is admitted to practice in Illinois, the Northern and Central District of Illinois courts, the Seventh Circuit Court of Appeals, the Federal Circuit Court of Appeals, and before the U.S. Patent and Trademark Office. He earned his undergraduate degree in Biomedical Engineering from the University of Iowa and his J.D. from the Chicago-Kent College of Law, where he was a member of the Moot Court Honor Society and Intellectual Moot Court Society and where he earned a Certificate in IP Law. He regularly guest-lectured at Columbia College in Chicago on a number of marketing and advertising topics and was a contributing author to one of the first Internet law treatises, Intellectual Property Law in Cyberspace.

Education:

  • B.S., University of Iowa;
  • J.D., Chicago-Kent College of Law.

Admissions:

  • State of Illinois Bar;
  • U.S. Court of Appeals for the 7th Circuit;
  • U.S. Court of Appeals for the Federal Circuit;
  • U.S. Patent and Trademark Office Bar.

Sean Price counsels clients on U.S. and international trademark prosecution and enforcement matters, as well as patent prosecution and due diligence issues. Prior to law school, Sean designed and wrote computer software for the metals and legal services industries, and further has experience marketing steel and other metals to large OEM manufacturers.

Education:

  • B.A., Illinois Wesleyan University;
  • J.D., magna cum laude, DePaul University College of Law (Certificate in Intellectual Property).

Admissions:

  • State of Illinois Bar;
  • U.S. Patent and Trademark Office Bar.

Valerie Neymeyer-Tynkov drafts and prosecutes patents in the pharmaceutical, biotechnological, medical, and chemical arts; prepares legal opinions; devises cost-saving strategies; and troubleshoots patent-related problems for clients. Her technical expertise includes over six years of bench experience in R&D and academic laboratories, including experience manufacturing product under cGMP protocols. Valerie is an Adjunct Professor of Law at Chicago-Kent College of Law, where she teaches International Patent Law.

Education:

  • B.A., University of Iowa;
  • M.S., University of Iowa J.D., with honors;
  • J.D., Chicago-Kent College of Law.

Admissions:

  • State of Illinois Bar;
  • U.S. Patent and Trademark Office Bar.

Contact Us

IpHorgan uses its ability, draws upon its years of experience, and its track record of achievement to provide service that produces excellent results for today and for the future.

We welcome your enquiries.

195 Arlington Heights Rd., Suite #125
Buffalo Grove, Illinois 60089
United States of America

Tel 847-808-5500
Fax 847-808-7238/7245

lawyers@iphorgan.net