​​​​​​​​​​​​​​​​​ ​THE BOURNE FIRM

​​​​​​​​​​​​​

​​​​​​​​​​​​​​Experienced on-demand general counsel for small to mid-sized companies not yet ready for full-time general counsel. 

The following are examples of THE BOURNE FIRM's experience with respect to intellectual property and how that experience could benefit you:

• ​​​Advised concerning protection of intellectual property rights, including copyrights, trademarks and trade secrets; drafted, filed and followed up regarding applications for protection of intellectual property rights; and maintained physical and electronic files for intellectual property, as well as tracking systems for key filing dates.
  
• Conceived, executed and oversaw complex strategy for the protection of crucial intellectual property, including copyright, trademark and trade secrets associated with innovative technology valued at approximately $40 million.
  
• Collaborated with counsel in numerous foreign countries to assess key intellectual property that would need to be protected in connection with expansion of company around the world; assisted in researching the law to determine what would be necessary to protect it; and filed, monitored and finalized applications for protection.
  
• Drafted and implemented procedures for the protection of intellectual property, including audits, creation, disclosure, registration, use, contracts, funding, storage, confidentiality, day-to-day diligence and termination.
  
• Conceived and communicated guidelines for use of trademarks and service marks.
  
• Reviewed license agreement concerning portfolio of copyrighted music designed to ensure right to, and payment for, public performances of music.
  
• Drafted authorization for photos and videos used in advertisements and advised regarding key terms and conditions of, and highly efficient process for, authorization, as well as specific circumstances in which authorization should be used and acceptable modifications to it.
  
• Drafted master work-made-for-hire agreement among college and companies providing for creative development and marketing of products as part of course work.
  
• Advised regarding restrictions in primary revolving credit facility on use of logo by third parties.
  
• Counseled regarding licenses, including scope, for use of intellectual property owned by third parties.
  
• Advised regarding potential claim of copyright infringement arising out of use of copyrighted song with modified lyrics in advertisement without permission of copyright owner.
  
• Negotiated agreement for pragmatic limitations on use of intellectual property after claim of infringement.
  
• Drafted, filed and completed registrations for protection of key intellectual property, including communications with and adjustments required by U.S. Patent & Trademark Office.
  
• Advised regarding specific formatting and interstate commerce use requirements for samples of use.
  
• Drafted and filed affidavits, samples and other documents necessary for maintenance of critical intellectual property. 
  
• Developed and advised regarding standard footer for copyright, confidentiality and trade secret notices.
  
• Assessed and advised regarding whether proposed trademarks or service marks legally could be protected under intellectual property laws.
  
• Counseled concerning feasibility of registering various corporate slogans.
  
• Drafted and revised license agreement for use by third parties of intellectual property.
  
• Provided guidance regarding whether name of celebrity could be used in point-of-sale advertising based on guidance from the U.S. Federal Trade Commission and the common law doctrine of right of publicity.
  
• Cut costs for complex patent litigation by an estimated $400,000.