McGlinchey Stafford

Working at the crossroad of emerging patent and IP laws and competitive business practices, McGlinchey Stafford’s intellectual property attorneys counsel national and global commercial leaders, research and development teams, educational institutions, and innovators.

In 2008, the renowned intellectual property law boutique of Sieberth & Patty, LLC merged with McGlinchey Stafford, deepening our five decades of IP practice experience and service to clients. We have significant strength in IP issues facing the chemical, oil and gas, pharmaceutical, and mechanical equipment industries.

From defending patent interference claims made by a Nobel Laureate chemist, to enforcing injunctions that protected a retailer’s trade secrets, our IP attorneys help clients establish, extend, monetize, and defend IP assets and portfolios.

Our team of IP attorneys secures and defends vital patent, copyright, trademark, and trade secret rights. Hundreds of successful patent applications, as well as the resolution of complex IP issues and litigation, form the foundation of representative matters for our IP practice.

The extensive technical background of our attorneys influences a practice approach that is proactive, cost-efficient and forward-thinking. And highly effective.


Practice Scope - Filing, Prosecution, Litigation, and Counsel
Our range of IP services anticipates the burgeoning need of today’s companies and research leaders. When appropriate, we collaborate with firm colleagues in other practice areas to provide comprehensive IP counsel and services, which include:

Patents - U.S. and foreign patent application preparation, prosecution, appeals and interferences. We guide clients through the process and routinely obtain broad and valid patents for research centers, educational institutions, and commercial research and development teams.

Trademarks - Every business needs trademark protection and our attorneys are highly experienced in evaluating and strategically managing trademark assets. We provide comprehensive counsel on U.S. and foreign trademark/service mark applications, prosecution and appeals, and trademark and trade name availability searches.

IP Litigation and Enforcement - Experienced and effective at both defending and enforcing protections, our IP attorneys act aggressively against threats to our clients' assets. For example, for such diverse clients as an oil and gas exploration company and a publicly-traded insurance brokerage, we protected competitive, multimillion dollar agreements and assets by prevailing during injunction proceedings. Trademark, trade secret, and unfair competition litigation matters are also areas of achievement. Our experience includes favorable litigation outcomes in all resolution forums, including mediation and arbitration.

Copyrights - U.S. and foreign copyright applications, publishing, and related contracts.

Licensing and Transfers and IP Portfolio Management - Technology transfers, novelty and validity searches, legal opinions, and counseling are part of our practice background. Our experience includes negotiating pharmaceutical licenses and highly complex, international licensing agreements for wireless technology used by the blind.

Acquisitions and Sales of IP Assets - We offer opinions and provide due diligence during commercial transactions and have extensive experience working with venture capital investors in IP asset evaluations.

IP Advice and Counsel - Our opinions and advisory experience includes matters involving antitrust and IP issues, noncompete agreements, and insurance coverage for IP matters. Additionally, we advise on structuring businesses, IP holdings, and agreements within an IP-focused, protective, and practical framework.

Trade Secret Protection Counseling - When seeking a patent, our clients may have to reveal valuable trade secrets and other proprietary intelligence. Also, some business models require consideration of trade secret protection strategies as a viable alternative to patent protection. Our attorneys provide strategic counsel on achieving critical protections while commercializing IP assets with trade secret implications.

Expert Witness Consulting - Because of our consistent record of achievement in the IP arena, especially within the chemical and manufacturing sectors, we are asked to appear as expert witnesses and/or consultants from time to time. Several of our attorneys provide expert testimony during litigation matters and are available for pre-trial consultation and in the courtroom.


Client Industries
We are trusted counselors to clients based regionally, across North America and around the globe, including in Asia, Europe and the Middle East. Our clients are industry leaders, researchers and innovators in:

• Art, design and fine arts
• Chemical manufacturing
• Education and academic institutions
• Entertainment
• Food processing
• Franchise organizations
• Governmental entities and contracting
• Health care
• Hospitality
• Insurance and brokerage industries
• Internet commerce
• Financial services
• Oil, gas, and energy
• Pharmaceuticals
• Publishing
• Real estate development
• Research and development centres
• Technology companies

Technical Backgrounds of Attorneys
Our attorneys’ technical and scientific backgrounds are key practice strengths. A sizable number of attorneys in our IP practice have at least undergraduate degrees in a field of chemistry, biochemistry, or an engineering discipline.

The firm’s patent attorneys are also experienced in a variety of other fields of basic applied science, including mechanical and electro-mechanical arts, medical and pharmaceutical arts, software-based systems, financial and business systems, and industrial fabrication, including microfabrication.

Several attorneys in the firm have worked in the chemical industry or in an engineering capacity for related industrial service companies. All patent attorneys are licensed to practice before the United States Patent and Trademark Office.

Our attorneys’ technical skills and training provide a distinct advantage during the process of obtaining broad and valid patents and other IP protections for our clients.


Representative Matters
Patent Interference - Our client, a research university foundation, faced a patent interference challenge from another institution based upon work done by a Nobel-winning scientist. The matter, which involved opposing counsel from multiple global and national law firms, was resolved favorably.

Trade Secret and Agreement Protection - We successfully represented one of the largest national retailers in several of their IP matters, obtaining injunctions to prevent breach of covenants not to compete and reveal trade secrets.

Copyright Infringement - For a telecommunication systems company in a dispute with a national software trade association, we represented them against software copyright infringement allegations involving several hundred thousand dollars in alleged damages. Our favorable resolution of the matter resulted in a complete withdrawal of the asserted claims.

Trademark Ownership Dispute - During our representation of a restaurant chain in U.S. trademark opposition proceedings against a national restaurant conglomerate, our client obtained and retained ownership rights of the trademark in question.
Portfolio Procurement and Management - Our attorneys have procured and managed an international patent portfolio for an intellectual property holding company engaged in the development of industrial pump technology for use in the aggregate products industry.