Intellectual Property: Calfee

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, bio-chemistry, 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 2020, 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, 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."

One client is noted as 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 noted, "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 has also reported that their researchers 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."

Practice Chair, John S. Cipolla, was ranked in Chambers USA 2020 in Band 1 for Intellectual Property in Ohio. "John receives notable acclaim for his broad contentious and noncontentious practice, while being particularly 'well respected for his work in patent litigation.' Clients hold him in high regard, stating 'Our interaction with him has been amazing, and his overall performance is very good.'"

Raymond Rundelli, Partner, was ranked in Band 4 for Intellectual Property in Chambers USA 2020. Chambers reports, "Raymond Rundelli 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."

Calfee Partner Todd Tucker was ranked in Chambers USA 2020 in Band 4 for Intellectual Property. "Todd Tucker 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 U.S.-based IP portfolios."

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

Calfee was selected for inclusion in the 2021 "Best Law Firms" rankings by U.S. News – Best Lawyers in Litigation - Intellectual Property (National Tier 3, Metropolitan Tier 1 Cleveland) and Patent Law (Metropolitan Tier 1 Cleveland).

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

Calfee Partner, Ray Rundelli, has been named to the World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2015-2020. 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.