Managing Shareholder: Nicholas D Rouse
Shareholders: Nicholas D Rouse, Marc A Brockhaus, Emily E Campbell, Douglas J Sorocco
Languages: English, Spanish
Established in 1957 as Oklahoma’s original intellectual property firm, now with offices in Austin, Chicago, Washington, DC and Wilmington, DE. Dunlap Codding offers personalized, strategic, pragmatic and responsive legal counsel in all intellectual property practice areas. Clients include research and academic institutions, multinational technology and manufacturing organizations and start-up companies. On behalf of its sophisticated clients, it has for the past 50 years obtained more patents, trademarks and copyrights than any other firm in its 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 routinely assists clients in the acquisition and exploitation of patent portfolios of cutting-edge research in pharmaceuticals, life sciences, medical devices, immunology proteomics, and genomics.
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 providing 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.
The firm offers new approaches to patenting mechanical inventions, writing and patenting in nearly every mechanical field. Dunlap Codding has, since 1980, represented the most prolific living inventor in the US. Its mechanical practice has been recognized as one of the top two practices in the United States.
Electrical & Software Patents:
Dunlap Codding develops defensible and likely to be infringed portfolios and has patented sensor designs for sampling data underground and patent applications on communication methodologies and protocols which can be used for communicating between underground equipment and a surface location. It represents clients in patenting computer programs, electronic and/or optical (including nanooptical) equipment for use in the telecommunications industry. The firm wrote, prosecuted and obtained 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 Court and subsequently licensed to companies such as Apple, IBM, and Microsoft. The firm has obtained and enforced patents for Pictometry International Corp., a division of EagleView Technology Corporation, the market leader in aerial imagery, 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.
The firm represents clients in obtaining design patents in the United States and internationally.
Patent Post-Grant Proceedings:
The firm is experienced in the use of PGPs, including the use of patent post-grant proceedings to invalidate patent claims for petitioners and the defense of patent validity for patent owners.
Trademarks, Copyrights, Trade Secrets, Internet & E-Commerce:
Dunlap Codding’s work includes collaborative and strategic counseling on clearance searches, infringement analysis, licenses and agreements and litigation. The firm works closely with its clients to create proactive strategies to protect and manage international and US portfolios.
The firm handles complex cases including copyright, patent, trademark, and trade secret claims for Fortune 1000, mid-size and start-up companies, including within the biotechnology, life science and pharmaceutical industries. The firm sets realistic case budgets and conducts early case assessments. Dunlap Codding 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 & Transactions:
The firm’s practice includes a robust licensing section which functions across technological, geographical and governmental boundaries. It assists clients with acquiring, managing and commercializing businessdriven intellectual property portfolios and is experienced with licensing-in and licensing-out, research and development agreements among domestic and international corporations, development of licensing bundles built around platform technologies, cross licensing as a resolution of patent and other disputes, complex license agreements in support of the design, construction and commissioning of large-scale chemical manufacturing facilities and licensing in connection with acquisitions and divestitures. Lawyers at the firm are members and have been leaders of the prestigious Licensing Executive Society International (LESI) and Licensing Executives Society North America. Additionally, one of the firm’s lawyers is a Certified Licensing Professional (CLP). The firm’s licensing practice extends to copyright and trademark licensing. Dunlap Codding advises and counsels clients on all types of transactions and agreements related to the successful operation of the businesses.
The firm has licensed complex process technology and engineering packages to licensee/manufacturers throughout the world in India, China, and Brazil. 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.
Ashland, Inc., Balon Corporation, BioPath Laboratories Inc., Bench Tree Group LLC, BuildBlock Building Systems, Charter Communications, Inc., DePuy Synthes Companies, EagleView Technologies, Inc., Highland Supply Corporation, Infinera Corporation, Leachco, Inc., Matrix Service Company, MidFirst Bank, Oklahoma State University, Penny Candy Books LLC, Petra Industries, LLC, Pictometry International Corp., Siemens Healthcare Diagnostics, StarSpace46, Inc., Summersalt; The City of Oklahoma City; The State of Oklahoma; The University of Oklahoma