Main Menu Main Content

Overview

Calfee has one of the largest Intellectual Property and Information Technology practices in a general practice firm within the Midwest. The attorneys in our IP group have broad experience and a deep bench in prosecution, litigation, opinions, IP business strategy and counseling.

Of the approximately 40 skilled attorneys in Calfee's Intellectual Property practice, more than 30 attorneys are registered to practice before the U.S. Patent and Trademark Office. We have more than 18,000 patents and trademarks on our docket, 11,000 of which are international.

In addition to the comprehensive nature of our expertise, there are at least three distinct reasons why we believe our lawyers provide significant “added” value when representing intellectual property clients: 

  • Calfee’s Intellectual Property lawyers are integrated within our general corporate firm. Many businesses historically have chosen “boutique” intellectual property firms to handle their trademark and patent portfolios. While the Intellectual Property group at Calfee functions in many ways as if it were a distinct “boutique” firm-within-a-firm, our close working relationships with lawyers in other practice groups inform and cross-fertilize a business-oriented view of intellectual property matters. This business orientation results in efficient and informed involvement by intellectual property counsel, not only in formulating and implementing strategic portfolio management, but also in counseling on acquisitions or divestitures, joint ventures, strategic partnerships, licensing arrangements, and even general contracting matters.
  • The strength and experience of our Litigation practice also informs our overall approach to intellectual property law. While litigation is rarely desirable to our clients, the intellectual property dispute resolution experience of our lawyers is invaluable in a client counseling role. It allows us to anticipate potential portfolio development and management problems that other lawyers might not foresee and allows us to help our clients either avoid disputes or optimize their position when litigation becomes necessary or unavoidable. It also allows us, when preparing and prosecuting patent applications, to obtain broad protection and to ensure the validity and enforceability of patent claims.
  • Not only has Calfee been an “entrepreneur’s law firm” throughout our history, the Intellectual Property group is, in itself, a success story of legal entrepreneurship. Our entrepreneurial heritage also has taught us to live by a proactive service model that is beneficial to all of our clients, from closely held companies to public entities. We strive to update our clients consistently and promptly on pertinent developments and risks associated with their businesses. We are dedicated to swift and responsive communication with our clients, and we believe this results in more efficient performance of legal work, strong relationships with clients, and high levels of client satisfaction.

Most of the lawyers in our practice have undergraduate and/or graduate degrees in mechanical, aerospace, electrical, nuclear, computer, biomedical, or chemical engineering; or in chemistry, biochemistry, materials science or the biological sciences. Our attorneys offer a unique combination of technical capabilities and strong communication skills with pragmatic business counseling. Many of our attorneys have decades of experience practicing IP law.

Our Intellectual Property practice develops and protects the intellectual property and technology assets of a broad spectrum of clients. We conduct patent and trademark searches, prepare and prosecute U.S. and international patent, trademark, and copyright applications, and work with clients to maintain and enforce issued patents and registered trademarks. We also handle intellectual property disputes and litigation, including before the Patent Trial and Appeal Board and appeals to the Court of Appeals for the Federal Circuit. We litigate and help resolve issues of infringement (patent, trademark and copyright), trademark oppositions and cancellations, Inter Partes Reviews (IPRs) of patents, and trade secret and unfair competition violations.

We provide corporate counseling on issues of licensing agreements; assignments, security interest and confidentiality and nondisclosure agreements; trade secret protection; and patent and trademark infringement.

Serving a national and international client base comprised of both established and entrepreneurial enterprises, Calfee provides fully integrated, high-quality legal services throughout the United States and around the world. Our attorneys work with clients to develop strategies for utilizing the client’s intellectual property, protecting trade secrets, and for dealing with adverse claims of patent, trademark and copyright infringement. 

Click here to view our qualifications at a glance. 

Noteworthy

Chambers USA Band 2 Ranking in Intellectual Property (Ohio)

For well over a decade, our Intellectual Property group has been ranked and recognized by Chambers USA. In 2021, Chambers USA researchers noted that the team is "Esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio and the Midwest and across the USA. Highly experienced in the engineering, chemical and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

A client interviewed by Chambers USA 2020 researchers was quoted saying, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost." A market commentator added, "Calfee's IP attorneys are highly regarded; they are true experts, and they do excellent work for their clients." "This is a power bench; the team works well together and supports each other well. Each individual is responsive and knowledgeable in their expertise and experience. This is definitely one of my favorite firms to work with," stated another client.

Chambers USA 2020 researchers also found Calfee's IP team to be held in "very high regard by fellow practitioners who note Calfee's extensive experience representing clients in wider patent and trademark matters, IP litigation matters, appellate work, and advising companies on managing IP assets in China."

Firm Vice Chairman and Intellectual Property practice Co-Chair, John S. Cipolla, was ranked by Chambers USA 2021 in Band 1 for Intellectual Property (Ohio). Chambers USA researchers stated, "[John] receives notable acclaim for his broad contentious and noncontentious practice, and is particularly noted for his work in patent litigation." Clients interviewed by Chambers USA researchers remarked, "He takes difficult subjects and makes them easier to understand." Another client commented, "He's hard-working and has good judgment."

Partner and Intellectual Property practice Co-Chair, Mark W. McDougall, was ranked by Chambers USA 2021 in Band 4. A client interviewed by Chambers USA researchers noted, "[He] gets immersed in the facts and provides detailed guidance." Another source mentioned, "Mark is a smart patent lawyer."

Partner Raymond Rundelli was ranked by Chambers USA 2021 in Band 4. A client interviewed by Chambers USA researchers mentioned, "He's responsive, thorough and thoughtful." Chambers USA 2020 researchers reported, "[Ray] comes recommended as an 'excellent trademark attorney' who assists clients in an array of complex litigation and portfolio management work. His practice also extends to patent-related matters."

Partner Todd Tucker was ranked by Chambers USA 2021 in Band 3. Chambers USA researchers noted, "[Todd] takes on a range of domestic and cross-border IP disputes, including patent litigation. His experience includes matters concerning the protection of assets in China, and he regularly advises Chinese entities on US-based IP portfolios." Clients interviewed by Chambers USA researchers stated, "Todd stands out in his ability to provide practical advice from a multinational IP perspective because of his strong, unique background in patent litigation and international patent prosecution." Another client mentioned, "He helps make complex processes simple."

U.S. News – Best Lawyers® “Best Law Firms” Rankings

Calfee was selected for inclusion in the 2022 "Best Law Firms" rankings by U.S. News – Best Lawyers in the following areas:

  • Copyright Law (Regional Tier 2 Cleveland)
  • Litigation – Intellectual Property (National Tier 3, Regional Tier 1 Cleveland)
  • Patent Law (Regional Tier 1 Cleveland)

World Trademark Review 1000 – The World’s Leading Trademark Professionals

Calfee Partner Raymond Rundelli has been named to the World Trademark Review 1000 – The World’s Leading Trademark Professionals publication from 2015-2021. The annual WTR 1000 research directory recognizes the world’s leading trademark firms and professionals. Each year, WTR conducts exhaustive qualitative research to identify the firms and individuals that are deemed outstanding in this critical area of practice.

Professionals

Professionals

John S. Cipolla
Vice Chairman; Co-Chair, Intellectual Property
Brad  Liu
Associate; Associate Director, International Business – China

Experience

Experience

Calfee’s client list includes some of the largest and most successful companies in and around Ohio, including:

  • The Lincoln Electric Company (LECO)
  • American Greetings
  • GOJO Industries, Inc.
  • Invacare Corporation (NYSE: IVC)
  • Swagelok Company
  • STERIS/U.S. Endoscopy Group (NYSE: STE)
  • RPM International Inc. (NYSE: RPM)

A few of Calfee's national and international clients outside the Ohio area include:

  • Teva Pharmaceuticals
  • New World Medical
  • Fortune Brands (NYSE: FBHS) (ex., Master Lock Co. and Moen, Inc.)
  • Hytera Communications Co, Ltd.
  • BOE Technology
  • BYD Company

The IP in IT

The IP in IT

Among the fastest growing, most rapidly-evolving and valuable intellectual property asset categories in today’s marketplace are those in computer software, hardware, firmware, networks and related information technology (IT) goods and services. Among other notable features, various facets of such IT assets may enjoy protection under all forms of intellectual property (IP) – patents, copyrights, trademarks and trade secrets.

Calfee’s highly-regarded IP attorneys have deep and extensive experience in securing, protecting, defending and enforcing all of these forms of IP in IT. That experience includes drafting and prosecuting patent applications for some of the most sophisticated IT inventions, registering copyrights in software and websites and helping clients develop programs to protect the confidentiality of critical trade secrets embodied in their IT products, services and processes. It also entails high-stakes litigation over software patents, copyrights and trade secrets, in which we have successfully protected clients’ interests, as both plaintiffs and defendants, in trial courts across the country and before the U.S. Court of Appeals for the Federal Circuit.

Additionally, our IP attorneys are active in drafting and negotiating agreements for the full array of transactions through which IP assets in IT are developed, licensed, transferred and otherwise commercially exploited, including working closely with our colleagues in other practice areas, such as mergers and acquisitions.

If you care about the IP in IT, you should be talking with Calfee.

Client Feedback

Client Feedback

"Calfee, Halter & Griswold makes IP and patent work easy. They have become an essential part of our IP team."

– Calfee client, as reported by U.S. News – Best Lawyers® in their 2019 “Best Law Firms” rankings report

News & Events

News

Alerts

PDF

Practice Contacts

"Calfee's IP group is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio, the Midwest and across the USA. They are highly experienced in the engineering, chemical and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

Researcher comments from the Chambers USA 2021 Guide

Jump to Page