Intellectual Property & Technology

Licensing

Stites & Harbison’s Intellectual Property and Technology attorneys represent clients in all types of licensing and technology transfer agreements. We have helped private and public organizations commercialize technology through licensing in, licensing out, and cross-licensing strategies. For example, our attorneys recently negotiated and drafted a technology development agreement between a U.S. client and an overseas entity involving the licensing of domestic and foreign patents, trade secrets, and transfer of substantial technology.

Several of our attorneys are members of the Licensing Executives Society International. Others are active in the Association of University Technology Managers (AUTM).

In licensing matters, our attorneys often work closely with the firm's Entrepreneurial Services Group to advise clients on such matters as business structure, labor, employment, and employee benefits. Attorneys in the firm also have significant experience in venture capital, estate planning and succession issues, private placements, initial public offerings, recapitalization and various forms of debt and equity issues.

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Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2020 List

LOUISVILLE, Ky.—Managing Intellectual Property magazine has named seven Stites & Harbison, PLLC attorneys to the 2020 “IP Stars” list. The publication recognizes the most highly regarded intellectual property attorneys in the U.S.

by Joel T. Beres, Mandy Wilson Decker, Alexandra MacKay, Richard S. Myers Jr., David W. Nagle Jr., Marvin Petry, and B. Aaron Schulman May 06, 2020
Press Releases

Chambers USA 2020 Honors 19 Stites & Harbison Attorneys

LOUISVILLE, Ky.—Chambers USA selected 19 Stites & Harbison, PLLC attorneys in Kentucky and Tennessee for inclusion in their 2020 guide.

by Stites & Harbison, PLLC May 05, 2020
Client Alerts

Supreme Court Rules Proof of Willfulness Not a Precondition to Profits in Trademark Infringement Actions

On April 23, 2020, the United States Supreme Court resolved a circuit split and held that plaintiffs in Lanham Act trademark infringement cases do not need to show the defendant infringed willfully in order to recover the defendant’s profits.

by John W. Scruton and Mari-Elise Paul April 29, 2020
Events

Spring Cleaning for Your Intellectual Property

Date: 4/30/20
Time: 12:00 p.m. - 1:00 p.m.

WEBINAR

Attorneys John Scruton and Nick Stewart will discuss suggestions on how to make your business's IP portfolio even better in 2020.

John W. Scruton and Gary N. Stewart (Nick) April 27, 2020
Trademarkology

Intellectual Property Offices Grant Relief to Applicants and Registrants During Coronavirus Pandemic

The United States Copyright Office (“Copyright Office”) and United States Patent and Trademark Office (“USPTO”) have taken steps to follow the CDC recommendations for slow the spread of COVID-19.

by Mari-Elise Paul March 26, 2020
Client Alerts

Shiver Me Timbers! States Can’t be Sued for Copyright Infringement

Ahoy, Mateys! Earlier this week, in Allen v. Cooper, Case No. 18-877, 589 U.S. ___ (Mar. 23, 2020), the United States Supreme Court held that the Copyright Remedy Clarification Act of 1990, a federal statute stripping states of their sovereign immunity from copyright infringement suits, lacked a valid constitutional basis. Thus, states cannot be sued for copyright infringement.

by Alexandra MacKay and Mari-Elise Paul March 25, 2020
Trademarkology

The PTO's Valentine: Rule Changes for Email Addresses and Specimens

On February 15, 2020, the PTO’s new examination guide will go into effect in accordance with new rule changes. In this post, we highlight two of the changes described in the guide that may have more of an impact on brand owners, namely, those pertaining to new email address and specimen requirements.

by Alexandra MacKay February 13, 2020
Trademarkology

Are Attorneys' Fees Expenses?

Earlier this week, in Peter v. Nantkwest, Inc., Case No. 18-801 the Supreme Court of the United States unanimously held that the United States Patent and Trademark Office (the “PTO”) cannot recover the salaries of its legal personnel as expenses under Section 145 of the Patent Act.

by Alexandra MacKay December 13, 2019
Events

Global Executive Forum: Future of the China Relationship for Kentucky Business

Date: 10/10/19
Time: 8:00 a.m. - 10:00 a.m.

The Olmstead, 3701 Frankfort Avenue, Louisville, KY 40207

Alexandria office intellectual property attorney Jeffery Langer will be a presenter at this event hosted by the World Trade Center Kentucky on October 10, 2019.

Stites & Harbison, PLLC October 07, 2019
Trademarkology

Levi's Keeps Tabs on YSL's Pockets

Levi Strauss & Co. and Yves Saint Laurent have reached settlement in the Northern District of California lawsuit filed by Levi’s over YSL’s use of pocket tabs on jeans.

by Mari-Elise Paul September 24, 2019
Trademarkology

The Trouble with THE

You may have heard by now that a certain Midwestern university that gets a lot of attention in this blog has filed an application to register the word THE as a trademark.

by John W. Scruton September 05, 2019