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IP Audits & Strategic Planning

Contact

Jack S. Barufka
Partner, Northern Virginia
T: +1.703.770.7712
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Pillsbury’s Intellectual Property lawyers provide strategic advice, conduct audits to identify risks and opportunities, and help clients preserve, protect and optimize IP asset values to enhance their competitive position worldwide.

Our Intellectual Property practice lawyers advise clients across a multitude of industries on IP asset management, protection, infringement avoidance, and strategies to build and maximize the value of their IP assets and portfolios. We provide guidance to inventors and IP owners and acquirers regarding all types of intellectual property and forms of protection at all stages — from idea development or acquisition through licensing, M&A transactions, and infringement assertions and defense.

Our team includes lawyers and professionals with advanced technical degrees, former USPTO patent and trademark examiners, IP litigators and team members who previously worked in a variety of industries. We bring together varied perspectives to offer comprehensive guidance and assistance in establishing, evaluating and enforcing IP strategies and programs.

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Pillsbury’s IP Audits & Strategic Planning team advises on all forms of IP protection including patents, trademarks, trade secrets, copyrights and domain names. Our services include:

  • Evaluating the ownership and chain of title of all IP assets within a portfolio
  • Identifying current and future technical challenges and impediments to IP protection
  • Negotiating and structuring IP R&D joint ventures, collaborations and strategic alliances
  • Integrating IP strategy with the company’s business plan and litigation strategy
  • Analyzing market and competitive landscapes to identify high-value targets for IP protection
  • Addressing disclosure issues
  • Protecting the value of employee research and development activities
  • Providing guidance on and assisting with brand protection
  • Advising on global IP registrations, protections and enforcement
  • Facilitating development and strategic protection and enforcement of valuable IP property
  • Conducting IP due diligence, identifying and analyzing infringement risks, and advising on mitigation strategies
  • Providing IP infringement and validity opinions
  • Assisting in assessing IP risks and opportunities and evaluating strategies to monetize and leverage IP assets to their full potential
  • Advising on potential acquisitions and competitive opportunities
  • Establishing proper procedures to preserve and protect trade secrets
  • Optimizing current research goals and patent filing procedures to achieve corporate goals
  • Providing guidance on adequate record keeping and information archiving
  • Advising on, preparing and negotiating confidentiality and assignment of invention agreements, and educating employees regarding IP protection
  • Evaluating current legal status of intellectual property contracts, such as licenses with third parties and co-development agreements, and assessing licensing opportunities and barriers
  • Analyzing potential infringement and risks of IP infringement by third parties
  • Providing comprehensive guidance on portfolio management including ways to maximize revenue from core and noncore IP assets

Representative Experience

  • Represented the Cystic Fibrosis Foundation in a record-setting $3.3 billion sale of drug rights to Royalty Pharma following an intensive IP due diligence effort.
  • Represented leading international musical instrument manufacturer in all aspects of developing, protecting and enforcing its global patent and trademark portfolio.
  • Represented leading international aircraft component manufacturer in all aspects of developing, protecting and enforcing its global patent and trademark portfolio.

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  • Advised international beverage company on developing and exploiting multiple global branding initiatives.
  • Advised Atrenta Inc. in IP matters through its acquisition by EDA leader Synopsys Inc.
  • Provided IP counsel to Nicira Networks, Inc. from startup to its $1.3 billion acquisition by VMWare.
  • Represented Financial Engines in its $500 million acquisition of The Mutual Fund Store.
  • Represented leading gene therapy company in strategic IP counseling, IP diligence and opinion work in connection with licensing, venture financing and subsequent IPO and follow-on offerings.
  • Represented Upland Software in a wide array of technology-related matters involving IP diligence on potential strategic partners, licensing, and intellectual property enforcement and litigation.

Practice Area Highlights

  • Ranked in Chambers USA for Intellectual Property in Northern Virginia (2011 – 2024) and Texas (2022 – 2024).
  • Ranked nationally and in Washington, DC, and Texas as one of the world’s leading IP practices across all aspects of patent law by Intellectual Asset Management’s “IAM Patent 1000,” with seven partners recognized individually (2014 – 2024).
  • Ranked nationally for patent prosecution and trademark prosecution by Managing Intellectual Property magazine in addition to regional recognitions in California and Virginia, with four Pillsbury lawyers recognized as “IP Stars” (2024).

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  • Ranked in California, Washington, DC, and Texas as one of the top trademark practices by World Trademark Review’s “WTR 1000,” with five lawyers named individually, including one lawyer receiving a national ranking for trademark prosecution (2024).
  • Recognized nationally for IP Litigation, Patent Litigation, Patent Law and Technology Law by Best Lawyers (2025).
  • Ranked by The Legal 500 U.S. in patent prosecution, including reexamination and post-grant proceedings (2022).

Resources

Placemat

Monetizing Intellectual Property Portfolios

Factsheet

The Basics of an Intellectual Property Program

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