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Managing and aggressively protecting intellectual property and technology assets is at the center of business today. At Masuda Funai, we work with domestic and international companies of all sizes on the development, protection, sale, transfer and licensing of IP, inventions and information technology, proprietary information and business method processes — across the country and around the world.

Our attorneys identify and protect trade secrets, proprietary processes and practices, patents, trademarks, copyrights and Internet domain assets. We conduct audits of intangible assets, as well as draft and enforce IP rights, trade secrets and privacy policies and procedures. We provide training for management and employees on trade secret protection including confidentiality, non-disclosure, works-for-hire and non-competition issues. In addition, we prosecute trademark applications and execute patent, trademark, trade name, corporate name and registration searches, as well as represent clients before the U.S. Patent and Trademark Office (USPTO) and the Trademark Trial and Appeal Board (TTAB).

Regarding electronic commerce, we identify and advise on emerging legal issues such as privacy, allocation of territorial rights for cyberspace sales and risk management of tax and legal action in remote jurisdictions. We prepare website terms of use, privacy and security policies and other clickwrap agreements, as well as advise on e-mail practices, metatags, framing, linking, cybersquatting and contracting for web development and hosting services.

We are well-versed in the technologies that support business and drive commerce. Our attorneys negotiate development, integration, implementation and maintenance agreements for ERP, CRM, database, website and other types of information systems for clients that develop and market such technologies or services including hardware, software and consulting. We negotiate and form strategic partnerships and technology joint ventures with particular skill in heavy industry and manufacturing. We also advise on 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. In addition, we counsel clients in connection with universities and private research foundations regarding licensing policies, procedures and ownership.

Our litigators vigorously defend each client’s IP and technology rights, from the initial cease and desist phase through and including injunction proceedings, trial, mediation and/or favorable settlement. We resolve disputes involving unfair competition, patent/trademark/copyright infringement, trade dress, trade secret misappropriation, counterfeiting, trademark dilution, domain name and comparative advertising claims. We also prosecute cases against departing employees who improperly use sensitive, hard-earned customer IP and proprietary data, and counterfeiting by unauthorized product sellers.

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Range of Services Experience

Experience

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.
People

People

Michael S. Golenson
Principal, Chicago
P 312.245.7529
Steven L. Katz
Principal, Chicago
P 312.245.7500
George H. Kobayashi
Principal, Chicago
P 312.245.7500
Monika R. Oyama
Associate, Chicago
P 312.245.7500
Joseph S. Parisi
Principal, Schaumburg
P 847.734.8811
Stephen M. Proctor
Principal, Schaumburg
P 847.734.8811
Nancy E. Sasamoto
Principal, Chicago
P 312.245.7500
David J. Stein
Principal, Chicago
P 312.245.7474
Jiwon Juliana Yhee
Associate, Chicago
P 312.245.7500
News & Events
Legal Updates/Client Advisories
Mandatory U.S. Government Survey For U.S. Persons Who Have Had Transactions With Foreign Persons Involving Certain Services or Intellectual Property
This week the U.S. Department of Commerce’s Bureau of Economic Analysis (BEA) released its mandatory BE-120 Benchmark Survey of…
U.S. Supreme Court Narrows Patent Rights by Expanding Patent Exhaustion
In another decision against patent owners, the U.S. Supreme Court has decided to expand the scope of the patent exhaustion doctrine. The…
Supreme Court Cracks Down on Forum Shopping in Patent Lawsuits
In a highly-anticipated decision, the U.S. Supreme Court unanimously decided to crack down on forum shopping in patent infringement…
Giving Up What You Are Entitled To
There were two recent cases from the 7th Circuit Court of Appeals, one on May 16 and one on May 17. The parties, judges, and areas of law…
Trademark Infringement Suit That Should Not Have Been
Often trademark infringement suits result from the unanticipated intersection of two apparently unrelated products or services. Sometimes…
Events
Legal Symposium: Issues Facing U.S. Subsidiaries of Japanese Multinationals
6.15.16
Masuda Funai 2016 Legal Symposium Issues Facing U.S. Subsidiaries of Japanese Multinationals 8:00 - 8:30 a.m. Registration, Networking and…
News
Masuda Funai Hosts Northern Ireland Delegation
Masuda, Funai, Eifert & Mitchell Ltd. hosted the Northern Ireland Delegation on April 16, 2018 as part of its ABC Mission visit to Chicago…
Masuda Funai Featured in The Japan Times
The Japan Times published a comprehensive report this month on Japanese business activity in the Great Lakes Region of the United States…
Masuda Funai Elects Two New Principals
Masuda, Funai, Eifert & Mitchell , Ltd. is pleased to announce that Michael S. Golenson and David J. Stein have been promoted to Principal…
Publications