Philip J. Foret

Partner

pforet@stradley.com

vCard
Philip Foret

Overview

Philip Foret works closely with clients to develop strategies aligned with their business goals across the full range of intellectual property matters, including IP counseling and opinions, freedom-to-operate studies, due diligence, worldwide portfolio development, trademark clearance and dispute resolution, and copyright. Phil has assisted clients in developing comprehensive strategies that protect commercial embodiments within competitive landscapes. He routinely counsels clients throughout all stages of product development and often works directly with technical teams through design changes. He helps companies leverage IP rights and technology through licensing and other agreements. Phil’s experience spans across a wide range of technologies in various industries, including consumer and pet products, food science, pharmaceuticals, biotechnology, stem cell technology, chemical processes and equipment, control systems, medical devices, product manufacturing processes and systems, telecommunications, data systems technology, financial services and sporting goods.

In addition to his deep IP counseling practice, Phil has experience in IP litigation, representing clients in patent infringement cases in federal courts. He has also successfully argued domain name disputes before the National Arbitration Forum and has resolved trademark disputes through administrative proceedings before the Trademark Trial and Appeal Board.

Phil also has extensive experience in conducting buyer-side and seller-side transactional IP due diligence for all types of business deals. He helps clients identify business risk associated with the ownership, scope, validity and enforceability of IP rights that are the subject of a transaction.

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Representative Matters

  • conducted several freedom-to-operate, non-infringement and patentability studies during research and development of numerous pet products in a competitive landscape, and developed a comprehensive global patent strategy to protect the commercial embodiments and related white space
  • conducted patentability studies and developed a patent portfolio for a food product company
  • conducted patentability and trademark clearance studies for an LED manufacturing company that led to the development of a global patent and trademark portfolio
  • reached pre-discovery settlement of nuisance patent infringement suit brought by a patent troll in the Eastern District of Texas against a telecommunications company
  • developed a comprehensive brand-protection strategy for a deodorant manufacturing startup that included registering the company's trademark and acquiring misappropriated domain names under the Uniform Domain Name Dispute Resolution Policy
  • conducted a trademark clearance search for a hotel and registered the mark selected to be the house brand
  • developed and successfully policed worldwide trademark portfolios for numerous clients that resulted in preserving rights in clients' marks
  • drafted and negotiated numerous software licenses, software-as-a-service (SaaS) agreements and technology development agreements for a client
  • negotiated software licensing agreements for a federal credit union that made a comprehensive operational upgrade to an integrated transactional computer system
  • developed a comprehensive strategy for a client to protect and monetize copyrights in an original oratorio that has been performed in the top concert halls in America
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Credentials

Bar Admissions
  • Pennsylvania
  • U.S. Patent and Trademark Office
Court Admissions
  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Pennsylvania
  • U.S. District Court for the Western District of Pennsylvania
Education
  • J.D., Duquesne University School of Law
  • M.S., Duquesne University
  • B.A., Franciscan University
Memberships

  • American Intellectual Property Law Association
  • International Trademark Association
  • Board of Directors and Treasurer, Great Valley School District
  • Board of Directors (past), Chester County School Authority
  • Sons of the American Revolution

Publications

In The Community

Phil serves on the board of directors and is the treasurer of the Great Valley School District and has previously served on the board of directors for the Chester County School Authority.
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