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About Hill Wallack

The Hill Wallack Intellectual Property and Technology Law Resource Center is a dynamic blog by the intellectual property, technology and life science attorneys of Hill Wallack LLP.

Founded in 1978, Hill Wallack is a leading law firm with offices in Princeton and Cedar Knolls, New Jersey and Yardley, Pennsylvania.  Our regional strength places us in an ideal position in today’s market, particularly as to technology, life science and start-up ventures located in or near the greater New York City / New Jersey/ Philadelphia metro-corridor, and in particular, the “Einstein Alley” stretching from Philadelphia to NYC.  Being centrally located and with nearly 70 lawyers, our mid-market size allows us to provide sophisticated, high-level service to clients in a cost-efficient, responsive manner.

The Hill Wallack Intellectual Property & Technology Resource Center, including all our online resources and materials available for download, is provided by Hill Wallack for informational purposes only.  By accessing this website, you agree to our Terms and Conditions of Use.

The Intellectual Property practice group at Hill Wallack offers a full line of intellectual property services.  This group has several attorneys with over 20 years of relevant experience.  The practice group takes a team approach as needed, such as in litigation, thereby drawing on various specialties when needed.

Hill Wallack offers quality legal representation in the following intellectual property, technology and life science practice areas:

Patent Prosecution, Transaction and Counseling

  • Representation in patent prosecution, re-examination, reissue, interference and post-grant review proceedings before the USPTO on utility and design patent matters involving a wide range of technologies, industries and markets, including provisional and non-provisional filings
  • Patent enforcement through negotiation and settlement, licensing and litigation, if necessary, to protect patent rights
  • Clearance opinions – novelty/patentability, non-infringement, freedom to operate, validity, and enforceability opinions relating to issued patents and new products, devices, compositions, designs, structures, systems and methods
  • Due diligence investigations related to licensing, acquisitions and other technology-related transactions
  • Licensing/transactional – negotiating and drafting U.S. and international patent in-licensing, out-licensing and cross-licensing agreements and contracts for the sale and acquisition of patents, patent portfolios and related intellectual property and know how.
  • Representation in patent prosecution, re-examination, reissue, interference and post-grant review proceedings before the USPTO as well as all significant international patent examination authorities.
  • Assistance and counseling with the procurement of patent rights and the conduct of opposition proceedings in the European Union, Japan and other foreign jurisdictions.
  • Patent enforcement through negotiation, settlement, arbitration, mediation and, where necessary, litigation.
  • Representation in International Trade Commission (ITC) proceedings in patent matters involving the importation or sale of imported goods that may infringe upon a patent.
  • Due diligence investigations during licensing, acquisitions and other technology-related transactions to identify and define the scope of the relevant intangible assets.
  • Counseling and patentability opinions relating to new products, designs, structures, systems and methods.
  • Patent portfolio strategies for early stage ventures and universities.
  • Drafting and negotiating international patent portfolio in-licensing and out-licensing agreements, security agreements using patents as collateral and agreements for the acquisition and sale of patent portfolios.

Trademark Prosecution, Enforcement and Counseling

  • Counseling clients on branding strategies and the initial selection of a mark or design; assisting in the development and enforcement of trademarks, trade dress and brand identity
  • Conducting clearance through trademark availability searches and opinions on “freedom to operate” (right to use), infringement and enforceability.
  • Preparing, filing and prosecuting trademark, service mark and trade dress registration applications before the USPTO.
  • Initiating enforcement actions against infringers and other intellectual property rights violations.
  • Inter partes and ex partes proceedings before the Trademark Trial and Appeal Board (g., opposition proceedings, cancellation proceedings).
  • Negotiating and drafting licenses, concurrent use, right to use, and other trademark based agreements.
  • Undertaking of due diligence projects and trademark audits.
  • Litigating trademark infringement, trade dress infringement, dilution, unfair competition, counterfeit and false advertising cases in the state and federal courts.
  • Coordinating trademark litigation and anticounterfeiting investigations in the US and abroad.
  • Prosecuting and resolving domain name disputes.

Licensing/Software/Cloud and Transactional

  • Drafting and negotiating license agreements (patent, trademark, software, know how and many other related forms of intellectual property), SaaS services agreements, technology transfer agreements (with and for universities), material transfer agreements (for biological materials), sponsored research agreements (with and for universities), assignments (for individual intellectual property or as part of a larger transaction), intellectual property security agreements, non-disclosure agreements, research agreements, works for hire agreements, joint venture and collaboration agreements and much more.
  • Negotiating and drafting in-licensing, out-licensing and cross-licensing agreements for intellectual property, technology and related know how, including consulting agreements related thereto
  • Software development, consulting and licensing agreements; enterprise level master service agreements
  • Cloud/web based service agreements – master service agreements, service level agreements, platform service agreements, migration/integration service agreements, data security agreements, privacy agreements, terms and conditions of use agreements, hosting services agreements
  • Collaboration agreements, purchase agreements, and development agreements
  • Source code escrow agreements

Trade Secret Protection and Enforcement

  • Trade secret guidance and counseling
  • Confidentiality agreements, non-disclosure agreements, social media use agreements, employee/contractor agreements
  • Compliance/enforcement of trade secret rights under federal Defense of Trade Secrets Act of 2016


  • Copyright registration with the U.S. Copyright Office
  • Enforcement and protection of copyrights
  • Copyright licensing (exclusive and nonexclusive licensing)
  • Transfer of copyrights (through sale or otherwise)
  • Copyright litigation and related intellectual property litigation
  • “Fair use” under copyright law
  • “Works for hire” under copyright law
  • Software – Proprietary and Open Source
  • General counseling as to copyright issues and matters
  • Contracts (nondisclosure and confidentiality agreements)
  • Digital Millennium Copyright Act (“DMCA”) guidance and counseling (including take down notices, counter notices, safe harbor procedures)

Due Diligence

  • Due diligence investigations related to licensing, acquisitions and other technology-related transactions

Clearance Opinions

  • Clearance opinions for trademarks, service marks and brand devices
  • Clearance opinions (novelty/patentability, non-infringement, freedom to operate) for new products, devices, compositions, designs, structures, systems and methods
  • Legal opinions directed to issued patents – validity, enforceability, infringement, non-infringement

Computer, Internet and Related Technology

  • Computer contract preparation, negotiation and review
  • FTC compliance counseling
  • Website development and hosting agreements, terms and conditions use, privacy policy statements
  • E-commerce, electronic contracting and electronic signatures
  • Internet advertising activities and co-branding agreements
  • Outsourcing arrangements and agreements with information technology consultants
  • Internet and e-mail privacy and security

Life Sciences Practice

Hill Wallack recognizes that companies in the Life Sciences industry face both unique challenges such as complicated regulatory dynamics as well as unique funding opportunities from special incubator, venture capital and public funding sources. They are however, at their core, businesses with the same challenges and needs of every other business venture. Hill Wallack combines our unique connection to the scientific community with an experienced team of commercial and business legal professionals to provide a comprehensive solution to the legal needs of Life Sciences companies.

Hill Wallack represents Life Science companies in the following industries:

  • Pharmaceutical
  • Biopharmaceutical
  • Medical Devices
  • Biosynthesis
  • Biotechnology
  • Therapeutic
  • Diagnostic
  • Clinical Research

The following are representative matters successfully handled by Hill Wallack’s Life Sciences practice group:

  • Preparation and negotiation of product co-development and joint venture agreements between U.S. and Chinese life science companies.
  • Successfully defend generic pharmaceutical companies in ANDA/Hatch-Waxman litigation (Paragraph IV) brought by plaintiff reference drug companies.
  • Representation of life sciences companies in employment disputes and litigation.
  • Preparation and negotiation of funding and financing agreements for venture capital investments in start-up life sciences companies.
  • Representation of pharmaceutical companies in breach of contract disputes and litigation with vendors.
  • Negotiation of research agreements with universities regarding funding of research by venture capital investors.
  • Local counsel to domestic and Asian generic pharmaceutical companies in intellectual property litigation in the U.S. District Court, District of New Jersey.
  • Negotiation of patent license agreements between start-up life science companies and universities.
  • Representation of clinical research organizations (CROs) in partnership agreements concerning clinical safety and pharmacovigilance services.
  • Preparation and negotiation of stock purchase, transfer and vesting agreements between shareholders of life science companies.