Portrait of Brian E. Turung

Brian E. Turung

Partner

bturung@ubglaw.com
Cleveland – 216.583.7098
Mobile – 216.313.3258

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  • Identifies and advises clients of the advantages of IP ownership, prosecution, and protection strategies.
  • Counsels clients regarding securement, ownership, licensing, avoidance of infringement, dispute resolution, and enforcement of patents, trademarks, and copyrights.
  • Manages large IP portfolios, including extensive patent and trademark portfolios, for domestic and international corporate clients.
  • Prepares and facilitates ongoing prosecution of patent applications at the U.S. Patent and Trademark Office (USPTO) in the chemical, mechanical, electrical, and computer science arts, and coordinates the filing and prosecution of Patent Cooperation Treaty (PCT) and foreign national patent applications.
  • Prepares and facilitates the ongoing prosecution of trademark applications at the USPTO and foreign countries.
  • Counsels clients regarding structuring and managing invention identification and protection programs.
  • Counsels clients regarding marketing, trademark, and branding strategies to maximize protection of clients’ products and brands.
  • Structures and documents licensing and other transactions for the commercialization of patents and related assets and rights.
  • Conducts IP due diligence for mergers, acquisitions, and divestitures.
  • Counsels clients regarding patent portfolio development and management and related research and development activities.
  • Prepares patent- and trademark-related legal analyses and opinions, including oral and written patentability, landscape, freedom to practice, infringement/non-infringement, and validity/invalidity opinions.
  • Drafts, analyzes, and negotiates intellectual property agreements involving licensing, joint development, supply, consulting, confidentiality, and settlement.
  • Has patent litigation experience in federal court, including patent claim construction strategy, Markman proceedings, trademark infringement, and many aspects of discovery including third party discovery, depositions, and expert discovery.
  • Has trademark opposition and cancellation experience at the USPTO.

Experience

  • Identifies and advises clients of the advantages of IP ownership, prosecution, and protection strategies.
  • Counsels clients regarding securement, ownership, licensing, avoidance of infringement, dispute resolution, and enforcement of patents, trademarks, and copyrights.
  • Manages large IP portfolios, including extensive patent and trademark portfolios, for domestic and international corporate clients.
  • Prepares and facilitates ongoing prosecution of patent applications at the U.S. Patent and Trademark Office (USPTO) in the chemical, mechanical, electrical, and computer science arts, and coordinates the filing and prosecution of Patent Cooperation Treaty (PCT) and foreign national patent applications.
  • Prepares and facilitates the ongoing prosecution of trademark applications at the USPTO and foreign countries.
  • Counsels clients regarding structuring and managing invention identification and protection programs.
  • Counsels clients regarding marketing, trademark, and branding strategies to maximize protection of clients’ products and brands.
  • Structures and documents licensing and other transactions for the commercialization of patents and related assets and rights.
  • Conducts IP due diligence for mergers, acquisitions, and divestitures.
  • Counsels clients regarding patent portfolio development and management and related research and development activities.
  • Prepares patent- and trademark-related legal analyses and opinions, including oral and written patentability, landscape, freedom to practice, infringement/non-infringement, and validity/invalidity opinions.
  • Drafts, analyzes, and negotiates intellectual property agreements involving licensing, joint development, supply, consulting, confidentiality, and settlement.
  • Has patent litigation experience in federal court, including patent claim construction strategy, Markman proceedings, trademark infringement, and many aspects of discovery including third party discovery, depositions, and expert discovery.
  • Has trademark opposition and cancellation experience at the USPTO.