Capabilities

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.

Transactional Services

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.

Litigation Services

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.

Intellectual Property & Technology Specialty Areas
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What others are saying about us

Stites & Harbison have given us timely and insightful advice on a range of litigation/IP matters in the USA in recent years.

This comment was collected as part of the U.S. News — Best Lawyers® "Best Law Firms" research process. (2018-19)

I have worked with a number of patent law firms in the past, and ... Stites & Harbison far exceed any other firm in their responsiveness, knowledge of the pharmaceutical / biotechnology field, flexibility and commitment. They work closely with you to make sure the applications are accurate, strong and well presented. In addition, they not only manage the entire process, but provide strategic input and are impeccable in their follow-up. They have a global network, and draw upon resources as required to address the needs of their clients.

U.S. News & World Report / Best Lawyers - "Best Law Firms" Client Interviews 2017

Stites & Harbison has displayed an in-depth knowledge of patent law and has been very helpful in navigating us through the process.

Chambers USA 2017
See more related to Intellectual Property & Technology
Client Alerts

The Enablement Challenge for Genus Claims Under U.S. Patent Law: How Much Disclosure Is Enough After Amgen v. Sanofi?

Patent attorney Nick Stewart takes a look at the enablement challenge for genus claims under U.S. Patent Law in this Stites & Harbison Client Alert.

by Gary N. Stewart (Nick) May 22, 2023
Events

Navigating the Uncertainty of Nuclear Jury Verdicts and the FTC's Proposed Non-Compete Ban: What You Need to Know Now!

Date: 6/6/23
Time: 2:30 p.m. - 5:30 p.m.

Castle & Key Distillery, 4445 McCracken Pike, Frankfort, KY 40601

Please join the attorneys of Stites & Harbison on June 6th at Castle & Key Distillery as they discuss critical matters currently impacting employers.

Michael S. Hargis, Trevor T. Graves, Robin E. McGuffin, Robin D. Miller, and Emily Larish Startsman May 16, 2023
Client Alerts

Trademark Law Developments in the Metaverse

The Metaverse (or “Web 3.0”) provides varying levels of access to three-dimensional environments for various decentralized activities such as gaming, commerce, social media, dissemination of authenticated digital assets such as non-fungible tokens (NFTs) and cryptocurrency, and others. Participants can engage in any number of virtual reality activities and transactions with others at any conceivable virtual location, whether based in reality or in fantasy. Not surprisingly, trademark law has now reached the Metaverse.

by Patrick M. Torre May 03, 2023
Press Releases

Stites & Harbison Named to 2023 Top 10 Patent Firms in North America - South List

LOUISVILLE, Ky. —The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2023 Top 10 Patent Firms and IP Practices in North America – South list. This is the firm’s second year being honored.

by Stites & Harbison, PLLC April 04, 2023
Client Alerts

“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.”

by Shannon Antle Hamilton March 31, 2023
Client Alerts

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.

by Thomas J. Mihill (TJ) March 23, 2023
Events

UK Women Innovators Network Panel Discussion

Date: 3/28/23
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."

Mandy Wilson Decker March 10, 2023
Client Alerts

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.

by Patrick M. Torre March 06, 2023
Events

When Race & Gender Meet: Experiences of Black Women in the Law

Date: 3/7/23
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.

Calesia Henson February 22, 2023
Articles

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.

by Mandy Wilson Decker February 09, 2023
Press Releases

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.

by Stites & Harbison, PLLC January 17, 2023
Press Releases

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.

by Stites & Harbison, PLLC January 12, 2023
Press Releases

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.

by Stites & Harbison, PLLC January 06, 2023
Client Alerts

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."

by Joel T. Beres, Jeffrey A. Haeberlin, James Hayne, Thomas J. Mihill (TJ), Mari-Elise Paul, B. Aaron Schulman, Gary N. Stewart (Nick), and Patrick M. Torre December 14, 2022
Press Releases

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.

by Stites & Harbison, PLLC December 01, 2022
Press Releases

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.

by Stites & Harbison, PLLC November 04, 2022
Press Releases

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.

by Stites & Harbison, PLLC October 11, 2022
Press Releases

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.

by Stites & Harbison, PLLC September 28, 2022
Press Releases

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.

by James Hayne September 14, 2022
Events

Dragon Con

Date: 9/1/22 - 9/5/22

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.

Thomas J. Mihill (TJ) August 22, 2022