Intellectual Property & Technology
As a full-service group whose practice spans the globe, Stites & Harbison’s Intellectual Property and Technology (IPT) Group counsels and represents both domestic and international clients across the full range of intellectual property including patents, trademarks, copyrights, trade secrets, and licensing.
All businesses have intrinsic value in the creativity, invention, and innovation that makes them unique. In order to reach full commercial potential, however, an idea, product, or service must be properly protected. What distinguishes Stites & Harbison is our commitment to fully understanding not only our clients’ intellectual property but also their business and the markets in which they compete. This allows us to provide the greatest return on our clients’ intellectual property assets.
Our attorneys provide effective and efficient counsel from the creation and registration of intellectual property assets through the management and enforcement of intellectual property rights both in the United States as well as internationally.
Members of the IPT group possess technical experience and hold advanced degrees across a wide variety of fields including engineering, biology and life sciences, chemistry, and computer science. Through our office in Alexandria, VA, our attorneys can easily visit the United States Patent & Trademark Office to advocate for our clients in person.
In addition to securing patents, trademarks, and copyrights at the state, national, or international level, Stites & Harbison’s IPT Group also assists in developing and implementing intellectual property protection plans which are tailored for each client, whether an independent inventor, start-up, well-established business, or university. We work to maximize the value of our clients’ intellectual property through licensing agreements, sponsorship agreements, and other relationships with third parties. We draft and negotiate the appropriate terms related to the intellectual property, whether they are central to or incidental to a larger transaction. When needed, we also issue validity, infringement, and right-to-use opinions regarding our clients’ or a third-party’s intellectual property.
Stites & Harbison’s IPT Group has extensive experience litigating intellectual property matters before federal and state courts throughout the nation. This experience also extends to all levels of appeals, including the United States Supreme Court. Our firm's litigators aggressively protect the intellectual property assets of our clients, and defend those who have been wrongfully accused of infringing others’ intellectual property rights. The firm has handled a number of significant and well-known intellectual property disputes and has served as lead counsel in intellectual property litigation in more than 30 states. Examples of our IPT group’s work can be found here.
“To Text or Not to Text…” Challenges to Defending Employment Matters Involving Text Messages
A client recently received a litigation hold letter from an attorney representing a former employee. It demanded retention and preservation of all “documents and data” relating to or concerning the former employee, their work performance, and termination. The definition of documents and data also included all electronically stored information, “. . . such as e-mail, voicemail, . . . digital audio or video recordings, instant messages, text messages, social media posts, . . . and any other electronic information created, maintained or received by you.”
IP vs. PR: Lessons From the Dungeons and Dragons Open Game License Controversy
Wizards of the Coast, LLC (“WOTC” or “Wizards”) and its parent company Hasbro, Inc. (“Hasbro”) recently found themselves facing unexpected backlash from their attempt to modify an existing license agreement which they had in place with content creators, the Open Game License (OGL), which allowed those creators to use game mechanics and other elements from the Dungeons and Dragons (D&D) table-top role playing game. IP attorney TJ Mihill takes a look at what's going on.
UK Women Innovators Network Panel Discussion
Time: 3:30pm - 5:30pm
University of Kentucky, Gatton Student Center, Ballroom 212A, 160 Avenue of Champions, Lexington, KY
Join Mandy Decker and the UK Office of Technology Commercialization for the UK Women Innovators Network panel discussion of the book "Funded Female Founders: How to traverse the uneven playing field and secure funding to grow your business."
Scammers are Now Impersonating the USPTO: What You Need to Know
Recently the U.S. Patent and Trademark Office (USPTO) issued a Notice pertaining to a recent development in fraudulent communications pertaining to U.S. Trademark registrations and registration applications. Scammers are and have been accessing publicly available Trademark information and directly contacting applicants/registrants.
When Race & Gender Meet: Experiences of Black Women in the Law
Time: 4:00 p.m. - 5:30 p.m.
Louisville Bar Association Bar Center, 600 West Main Street, Louisville, KY 40202
Louisville office attorney Calesia Henson will be a member of the panel discussing "When Race & Gender Meet: Experiences of Black Women in Law" following the Louisville Bar Association's Justice William E. McAnulty Jr. Trailblazer Award presentation.
An Applicant's Guide To USPTO's Examiner Incentive System
Incentives are powerful tools for driving behavior. On this topic, billionaire businessman Charlie Munger famously advised to "[n]ever, ever, think about something else when you should be thinking about the power of incentives." Because the pathway from patent application to granted patent depends heavily on the actions and judgments of the examiner assigned to the application, a patent applicant is well advised to consider the examiner's perspective and the incentives imposed by the U.S. Patent and Trademark Office through the examiner production system, also referred to as the count system.
Scot Duvall Joins Stites & Harbison’s Louisville Office
LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Scot A. Duvall to the firm’s Louisville, Ky., office. He joins the firm as a Member (Partner) in the Intellectual Property & Technology Service Group.
Kentucky Super Lawyers Honors 49 Stites & Harbison Attorneys for 2023
LOUISVILLE, Ky.—The 2023 edition of Kentucky Super Lawyers recently honored 49 Stites & Harbison, PLLC attorneys in the Covington, Frankfort, Lexington and Louisville, Ky., offices. The publication named 37 attorneys to the Super Lawyers list and 12 attorneys to the Rising Stars list.
Stites & Harbison Promotes Seven Attorneys
LOUISVILLE, Ky.—Stites & Harbison, PLLC announced today that seven attorneys have been promoted: five to Member (Partner) and two to Counsel. The promotions are effective January 2023.
The Twelve Days of I.P. Christmas
As we come to the end of the year, the members of the Intellectual Property and Technology group at Stites & Harbison took time to reflect upon some of the amazing things that have occurred in the world of Intellectual Property. In a light-hearted review of some of our favorite finds from 2022, please enjoy our own take on the classic carol, "The Twelve Days of Christmas."
Nine Stites & Harbison Attorneys Honored by 2022 Mid-South Super Lawyers
NASHVILLE, Tenn.—The 2022 edition of Mid-South Super Lawyers recently honored nine Stites & Harbison, PLLC attorneys. Six attorneys were named to the Super Lawyers list and three were named to the Rising Stars list.
Stites & Harbison Earns 87 Rankings in 2023 "Best Law Firms" List
LOUISVILLE, Ky.—U.S. News & World Report and Best Lawyers® have released their 2023 “Best Law Firms” rankings. Stites & Harbison, PLLC’s three National Tier 1 rankings include: Litigation – Construction, Litigation – Real Estate, and Trademark Law. The firm’s overall results include 87 metropolitan rankings in six regions.
Managing IP Honors James Hayne on 2022 "Rising Stars" List
LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named Stites & Harbison, PLLC attorney James Hayne to its 2022 “Rising Stars” list.
Mari-Elise Paul Named a 2022 Go To Lawyer for Intellectual Property Law
ALEXANDRIA, Va.—Virginia Lawyers Weekly recently named Stites & Harbison, PLLC attorney Mari-Elise Paul to the 2022 list of Virginia’s Go To Lawyers for Intellectual Property Law. She is one of 19 attorneys honored.
Kids Cancer Alliance Selects James Hayne to Lead Young Professionals Committee and Serve on Board
LOUISVILLE, Ky.—Kids Cancer Alliance (KCA) has selected Stites & Harbison, PLLC attorney James Hayne as the inaugural chair of its Young Professionals Committee. As chair of this committee, Hayne will also serve as a member of the Board of Directors. His term will be one year.
Hyatt Regency Atlanta, Atlanta Marriott Marquis, Hilton Atlanta, Sheraton Atlanta Hotel, and the Westin Peachtree Plaza Hotel, Atlanta, GA
Atlanta office attorney TJ Mihill will be a speaker at this year's Dragon Con being held September 1-5 in Atlanta.
Stites & Harbison, PLLC Lawyers Named to 2023 Best Lawyers® Publications
LOUISVILLE, Ky.—Stites & Harbison, PLLC is pleased to announce that 98 of its lawyers are included in the 2023 Edition of The Best Lawyers in America©. Additionally, 11 Stites & Harbison attorneys are named as “Lawyer of the Year” and 19 attorneys are recognized in “Best Lawyers: Ones to Watch,” which recognizes attorneys early in their careers for outstanding professional excellence in private practice in the United States.
Thirsty Thursday Networking Event: Like It or Not, Contractors Need To Think About Intellectual Property
Time: 4:30 p.m. - 6:00 p.m.
400 West Market Street, 18th Floor, Louisville, KY 40202
Stites & Harbison will host a Thirsty Thursday networking event about contractors needs to keep intellectual property on their minds on Thursday, September 8th.
Strategizing International IP Filings
Time: 4:00 p.m. - 5:15 p.m.
Zoeller Pump Co. Center for Excellence, 3649 Cane Run Rd, Louisville, KY 40211
Join speakers Jeffery Langer (formerly with Stites & Harbison and now General Counsel at Zoeller Company) and Robert Sterne, Co-Founder of Stern, Kessler, Goldstein & Fox, for perspectives on strategizing international IP filings. Panel discussion to be followed by networking event sponsored by Stites & Harbison.
Artificial Intelligence and Inventorship Under U.S. Patent Law
In recent years, the capabilities of, and applications involving, artificial intelligence (“AI”) have dramatically increased, so much so that AI systems are now able to produce works of creativity and ingenuity once thought only to be possible through human efforts. The U.S. Copyright Office has already wrestled with the question of whether creative works authored by AI are eligible for federal copyright protection and determined that they are not in an opinion letter dated February 14, 2022.