- Managing Shareholder: Nicholas D Rouse
- Number of shareholders: 3
- Number of other lawyers: 9
- Number of patent agents: 3
FIRM OVERVIEW: Established in 1957 as Oklahoma’s original intellectual property firm, the firm serves a global client base from one of the lowest-cost major US metropolitan areas. Clients include research institutions, large multinational manufacturers, start-up companies and individual inventors. Dunlap Codding offers personalized, strategic,pragmatic and responsive legal counsel in all intellectual property practice areas. On behalf of its sophisticated client companies, it has for the past 50 years obtained more patents, trademarks and copyrights than any other firm in the region.
MAIN AREAS OF PRACTICE:
Biotechnology & Life Science Patents: The firm prosecutes more than 100 technologies and improvements a year on immunology-linked inventions alone. It secured intellectual property protection for the first process for producing individual endogenously loaded soluble HLA molecules and on the first recombinant methods for producing hyaluronic acid, chondroitin, and heparin. Dunlap Codding professionals routinely assist legacy and start-up companies in the acquisition and exploitation of patent portfolios of cutting edge research in the areas of pharmaceuticals, life sciences, medical devices, immunology proteomics and genomics.These portfolios have led to the creation of several internationally recognized companies.
Chemical Patents: The firm is the preferred provider to some of the world’s largest chemical companies writing and prosecuting patents on front line chemical engineering technologies and strategic planning and facilitated innovation services to help clients maintain their technological leads. It conducts complex freedom to operate analyses, and provides infringement and invalidity opinions. The firm provides due diligence analyses in connection with capital investments.Using an in-house proprietary process, it provides facilitated patent strategy sessions and identifies market-entry opportunities.
Mechanical Patents: The firm provides new approaches to patenting mechanical inventions, writing and patenting in nearly every mechanical field, including machines of less than five parts as well as those having thousands of parts. Dunlap Codding has, since 1980, represented the most prolific living inventor in the US, whose portfolio now includes 1,200+ issued US patents, hundreds of foreign patents and some of the earliest configuration trademarks. Its mechanical practice has been recognized as one of the top two practices in the United States.
Electrical & Software Patents: The firm develops defensible and likely to be infringed portfolios,with more electrical and software patents that have withstood the rigors of litigation than any other firmin the region. It has patented sensor designs for sampling data underground and has prepared patent applications on communication methodologies and protocols which can be used for communicating between underground equipment and a surface location. It has represented clients in patenting computer programs, electronic and/or optical (including nano-optical) equipment for use in the telecommunications industry. Further examples of its work include writing,prosecuting, and obtaining the fundamental patents that covered the downloading of ‘digital data’ on the internet. These patents were successfully litigated and deemed to be valid and enforceable by the United States Court of Appeals for the Federal Circuit and subsequently licensed to companies such as Apple, IBM and Microsoft. The firm has obtained and enforced patents for Pictometry International Corp., the market leader in aerial imagery used by companies such as Microsoft as well as governmental entities, against US and foreign-based infringers and has helped Pictometry develop a worldwide portfolio of patents that have been used to keep all significant competitors out of the marketplace.
Intellectual Property Audits: The firm’s audit practice includes comprehensive review and analysis of all intellectual property assets, procedures and processes, and extends to competitive landscape audits. comprehensive audits provide invaluable opportunities to convert information and technological advances into sustaining, income-producing assets.
Trademarks, Copyrights, Trade Secrets, Internet & E-Commerce: Dunlap Codding’s work includes training, guidance and collaborative counseling on the selection and registration of the strongest possible marks, clearance searches and infringement analysis, and creating proactive strategies to protect existing marks.The firm conducts global trademark audits and manages international and US trademark portfolios, preparing internal guidelines and style sheets regarding creating and correctly using trademarks. The copyright practice similarly includes education and counseling, federal and international copyright registration, licenses and agreements (of all types), and litigation in state and federal courts. The firm prepares web and software development agreements, terms of service and use agreements, and privacy policies.
Litigation: Dunlap Codding is experienced in setting realistic case budgets and conducting early case assessments, handling complex commercial cases for Fortune 1000 companies and start-ups involving contract disputes, business torts, product liability and all areas of intellectual property law. The firm litigated one of the first trademark infringement cases involving the issue of genericism and the scope of trademark protection afforded to generic product configuration and trade dress.
Licensing: The firm’s practice includes a long and successful history of licensing intellectual property across technological, geographical and governmental boundaries. The firm assists clients with acquiring,managing and commercializing a business-driven intellectual property portfolio. It is experienced with licensing in and licensing out, joint development agreements among international corporations, development of ‘licensing packages’ built around platform technologies, cross licensing as a resolution of patent and other disputes, complex license agreement negotiations, including front-end engineering packages, patents and technical information in support of the design, construction and commissioning of large scale chemical manufacturing facilities and licensing in connection with acquisitions and divestitures.
International: The firm has licensed complex process technology and engineering packages to licensee/manufacturers in India, China, and Brazil, including provisions covering engineering design packages and delivery obligations through plant start-up and negotiated performance guarantees.The firm’s work has included acquisition and divestiture of numerous businesses with global assets: transferring corresponding US and non-US patent, trademark, and technology portfolios with negotiated grant-back,non-assert, confidentiality, patent/TM maintenance and other related contractual obligations and restrictions. The firm works with counsel throughout the world to obtain and exploit its clients’ patent and trademark portfolios.
CLIENTS: Cristal US Inc., Highland Supply Corporation, Hyalose L.L.C., Infinera Corporation, Millennium Inorganic Chemicals, Pictometry International Corp., QuiBids, Schlumberger Etudes Et Production SA, SDC Technologies, Inc., Siemens Healthcare Diagnostics, Synthes, The University of Oklahoma, DuPont, EKC Technology and many legacy and start-up biotechnology and chemical engineering companies.
Areas of PracticeIntellectual Property: 80%
Litigation: 20%