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 intellectual property lawyers 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 intellectual property 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.
Stites & Harbison have given us timely and insightful advice on a range of litigation/IP matters in the USA in recent years.
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.
Stites & Harbison has displayed an in-depth knowledge of patent law and has been very helpful in navigating us through the process.
Plant IP Protections in the U.S.
You have discovered a new plant variety. How do you protect your intellectual property (IP) rights in the U.S.? What are some of the available forms of protection, and what is the right form for you? IP attorney Wanli Wu takes a look at three options you have for plant protection in this Stites & Harbison Client Alert.
Stites & Harbison Welcomes Nancy Kennedy to Hartford Office
Stites & Harbison, PLLC welcomes attorney Nancy Kennedy to the Hartford, Conn., office. Kennedy joins the Intellectual Property & Technology Service Group as a Member (Partner).
Sixth Circuit Wrestles with Meaning of “Weekly Basis” Under the FLSA
On April 1, 2025, in Lynwood Pickens v. Hamilton-Ryker IT Solutions, LLC, the Sixth Circuit Court of Appeals clarified what it means to pay a salary on a “weekly basis” under federal regulation 29 C.F.R. § 541.602(a) for purposes of classifying an employee as exempt from overtime under the Fair Labor Standards Act (FLSA). In a divided opinion, the Sixth Circuit held that to be paid on a “weekly basis” means that an employee is paid for “a regular week’s worth of work.” As a result, the court held that an employer did not pay an employee on a “weekly basis”—and therefore owed the employee overtime—when the weekly guaranteed pay to the employee was only the equivalent of one day’s pay and the employee was paid an hourly rate for every hour worked beyond the first eight hours in the week.
Blueprints for Innovation: Intellectual Property in the Bluegrass State
Time: 3:00 p.m. - 5:45 p.m.
UK Gatton Student Center Ballroom 212A, 160 Avenue of Champions, Lexington, Kentucky 40508
IP attorney Mandy Wilson Decker will join a team of panelist for this event presented by UK Innovate, the Council for Innovation Promotion (C4IP) and the Kentucky Intellectual Property Alliance (KYIPA) on Tuesday, April 23rd at UK's Gatton Student Center in Ball Room 212A.
Intellectual Property Virtual Seminar
Time: 10:00 a.m. - 11:30 a.m.
Virtual Event
IP attorney Terry Wright will be a speaker at this virtual seminar presented by Marshall University Technology Transfer Office on April 21, 2025.
CAFC Affirms the Importance of Written Description in a Provisional Patent Application
On March 24, 2025, in In re Riggs, No. 22-1945, the Court of Appeals for the Federal Circuit (CAFC) addressed when the filing date of a provisional application can be relied on under 35 U.S.C. § 102(e) to support a rejection of a later-filed application. This opinion offers clarity on the importance of written descriptions in provisional patent applications for Patent Owners as well as Petitioners seeking to challenge a patent in a post-grant proceeding. Senior Patent Agent Samantha Page takes a look a the opinion in this Stites & Harbison Client Alert.
EEOC and DOJ Issue Guidance Regarding DEI in the Workplace
On March 19, 2025, the Equal Employment Opportunity Commission and the Department of Justice issued two technical assistance documents regarding “diversity, equity, and inclusion” (“DEI”) programs in the workplace. Consistent with the Trump Administration’s Executive Orders regarding DEI, these technical assistance documents warn of the potential illegality of certain employment policies or initiatives under Title VII of the Civil Rights Act of 1964. Robin McGuffin takes a look at the guidance recommended in this Stites & Harbison Client Alert.
USPTO’s New Continuation Fees Prompt Strategic Shifts and Raise Pendency Concerns
With the USPTO’s implementation of new fees for certain continuation patent applications, applicants now face important strategic decisions regarding the timing and management of their filings. IP attorney Mandy Decker takes a look at the new fees in this Stites & Harbison Client Alert.
Securing Global Patents: U.S. "Obviousness" vs. Chinese "Inventive Step" Standards
If you or your company have developed a new technology, filing a patent application is an important step to protect your investment. However, because patent rights are territorial, it’s often necessary to file patent applications not only in the United States, but also globally. IP attorneys James Hayne takes a look at the difference between the U.S. and the Chinese systems.
UPDATE: FinCEN and Treasury Department Announce They Will Not Enforce CTA Despite March Deadline
There is yet another update with respect to the Corporate Transparency Act (the “CTA”). Less than two weeks after the U.S. Treasury Financial Crimes Enforcement Network (“FinCEN”) set a new deadline for CTA compliance, both FinCEN and the U.S. Department of Treasury issued separate press releases announcing their intent to not enforce the CTA until new rules are finalized. Stites & Harbison's Corporate Transparency Act Committee takes a look at the update in this Stites & Harbison Client Alert.
Supreme Court Rules Trademark Plaintiffs Can Only Recover Profits from Defendants Named in the Action
On February 26, 2025, the United States Supreme Court unanimously held that a prevailing plaintiff in a trademark infringement case may recover profits only from the defendant named as a party to the proceeding, and may not also recover profits from the defendant’s affiliates who are not parties to the proceeding. Dewberry Group, Inc., fka Dewberry Capital Corp. v. Dewberry Engineers Inc., No. 23-900, _____ U.S. ____ (Feb. 26, 2025). The Court’s decision reinforced the principle of corporate separateness, but also left open the possibility that the federal trademark statute (the “Lanham Act”) might allow trial courts to consider evidence related to a defendant’s affiliates when exercising the discretion to adjust a profits award upwards or downwards for the sake of fairness. IP attorneys Alex MacKay and Sam Miller take a look at the decision in this Stites & Harbison Client Alert.
UPDATE: Corporate Transparency Act Back on as Potential Changes Loom
Compliance with the Corporate Transparency Act (the “CTA”) is no longer voluntary. Businesses subject to the CTA, which includes the majority of entities formed or registered to do business in the United States, will have until March 21, 2025, to file their beneficial ownership information reports with the U.S. Treasury Financial Crimes Enforcement Network (“FinCEN”).
2025 WTR 1000 Recognizes Stites & Harbison’s Trademark Practice
World Trademark Review (WTR) has recognized Stites & Harbison, PLLC and three attorneys in the 2025 edition of WTR 1000 – The World’s Leading Trademark Professionals.
Changes Impacting Intellectual Property and Innovation Policies Under the New Trump Administration
Since his inauguration on January 20, 2025, President Donald Trump has implemented several initiatives that significantly impact intellectual property (IP) and innovation in the United States. IP attorney Mandy Decker takes a look at those initatives in this Stites & Harbison Client Alert.
Pre-AIA Patent Applications Filed Before but Published After the Priority Date of a Challenged Patent are “Printed Publications” for IPRs
On January 14, 2025, the Court of Appeals for the Federal Circuit (CAFC) issued a ruling in Lynk Labs, Inc. v. Samsung Electronics Co. Ltd., No. 23-2346, clarifying whether a patent application that is § 102(e)(1) prior art qualifies as a prior art printed publication in an IPR proceeding. Senior Patent Agent Samantha Page and IP attorney Kimberly Vines take a look at that ruling in this Stites & Harbison Client alert.
2024 INTA North America Roundtable: Annual Case Law Review - Nashville, TN
Time: 12:00 p.m. CST - 2:00 p.m. CST
Stites & Harbison, PLLC, 401 Commerce Street, Suite 800, Nashville, TN 37219
IP attorney Alex MacKay will lead the annual case law review for this 2025 INTA Roundtable on February 3, 2025 at the Nashville office.
Trevor Graves Elected to the Lexington Humane Society’s Board of Directors
The Lexington Humane Society recently elected Stites & Harbison, PLLC attorney Trevor Graves to its Board of Directors. He will serve a six-year term ending in 2030.
University Wins Jury Verdict Over Online Retailer for Trademark Infringement
A trial over a trademark dispute relating to an unlicensed online retailer’s sale of apparel and other merchandise bearing historic or retro logos and images of universities has concluded. In 2021, the Pennsylvania State University (“Penn State”) brought suit against Vintage Brand (“Vintage”) for trademark infringement and other claims in federal court in the Middle District of Pennsylvania, styled as The Pennsylvania State University v. Vintage Brand, LLC et al., 4:21-cv-1091. Since that time, at least a dozen other schools have sued Vintage on similar grounds, but this was the first case to go to trial and it has been watched intently by the trademark world as a bellwether case in the sports merchandising industry landscape and perhaps beyond.
Kentucky Super Lawyers Honors 47 Stites & Harbison Attorneys for 2025
The 2025 edition of Kentucky Super Lawyers recently honored 47 Stites & Harbison, PLLC attorneys in the Covington, Frankfort, Lexington and Louisville, Ky., offices. The publication named 34 attorneys to the Super Lawyers list and 13 attorneys to the Rising Stars list.
New Trademark Fees at the PTO Starting January 18, 2025
The United States Patent and Trademark Office (the “PTO”) will update its trademark fee schedule effective January 18, 2025. Alex MacKay takes at look at the changes in this Stites & Harbison Client Alert.