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 prepared and negotiated a comprehensive license agreement between a U.S. client and an overseas entity involving the licensing of certain patent rights and technical information for use in the construction of industrial equipment. Our attorneys frequently prepare and negotiate private label agreements and similar contracts that implicate trademark rights and the branding of products. The group is very experienced in developing and structuring a wide range of agreements that govern the licensing and use of software. 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 Business 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

Stites & Harbison Named to 2022 Top 10 Patent Firms in North America – South List

LOUISVILLE, Ky.—The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2022 Top 10 Patent Firms and IP Practices in North America – South list.

by Stites & Harbison, PLLC May 16, 2022
Client Alerts

Wait . . . What About Trade Secrets?

When one seeks to protect one’s intellectual property, patents, trademarks and copyrights immediately come to mind. Often given short shrift is the "forgotten stepchild" —trade secrets. Trade secrets may encompass a wide range of business information that (a) has value because it is not generally known in the trade and (b) is subject to reasonable efforts to preserve its confidentiality. When considering trade secrets, “business information” should be given a very broad definition and may include, but is not necessarily limited to, processes, procedures, research projects, nonpublic company documents (relating to, for example, recruiting, accounting, financial information and legal information), drawings, blueprints, laboratory notebooks, test data, training manuals, customer information and supplier information.

by Warren D. Schickli May 02, 2022
Client Alerts

Europe Continues Progress Toward Unitary Patent and Unified Patent Court

For decades, inventors have been able to file a single patent application in the European Patent Office (“EPO”) in order to pursue protection across multiple countries in Europe. However, at the end of the examination process, a patent application granted by the EPO still must be validated in each of the countries in which a patent owner wishes to secure enforceable patent rights.

by David W. Nagle Jr. March 09, 2022
Client Alerts

Decoding the Crypto Brand Super Bowl Commercials

Based on commercials that aired during Super Bowl LVI, crypto brands have officially moved from the fringes to the mainstream. But the crypto ads in this prime time space didn’t do much to explain the underlying products and services, especially if the viewers were not already immersed in Web3.

by Mandy Wilson Decker February 18, 2022
Articles

Heavy Meta: Is Rebranding Worth All This?

Article by IP attorney Mari-Elise Paul in the Louisville Bar Association's Bench & Bar discussing rebranding.

by Mari-Elise Paul December 02, 2021
Client Alerts

USPTO Issues Final Rule for Implementation of the Trademark Modernization Act of 2020

The United States Patent and Trademark Office (USPTO) recently published a final rule implementing the Trademark Modernization Act of 2020 (TMA). The TMA amends the federal trademark statute (Lanham Act) in several ways, but the most significant aspect for the business community is the establishment of new ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce has not been made.

by Trevor T. Graves November 23, 2021
Press Releases

Stites & Harbison’s Intellectual Property & Technology Service Group Continues Growing with the Addition of Christina I. Ryan

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Christina I. Ryan as Counsel to the firm based in the Louisville, Ky., office. She joins the Intellectual Property & Technology Service Group.

by Stites & Harbison, PLLC November 22, 2021
Articles

Trademark Modernization Act Provides Useful tools for Brand Owners of All Sizes

The Trademark Modernization Act of 2020 (TMA) introduced several amendments to federal trademark statutes, known as the Lanham Act, that should prove favorable to brand owners when the TMA becomes effective on December 27th.

by Michael S. Hargis October 04, 2021
Client Alerts

Supreme Court Provides Additional Guidance on Assignor Estoppel in Patent Litigation

Assignor estoppel is an equity-based doctrine that can be invoked during the course of patent litigation to prevent an assignor, after assigning their interests to a patent to another, from later asserting that the patent is actually invalid.

by Gary N. Stewart (Nick) September 28, 2021
Press Releases

Mari-Elise Paul Named a 2021 Trailblazer in World IP Review’s Diversity Publication

LOUISVILLE, Ky.—World Intellectual Property Review (WIPR) has named Stites & Harbison, PLLC attorney Mari-Elise Paul as one of 20 Trailblazers profiled from around the world in WIPR’s Diversity Trailblazers 2021 list.

by Stites & Harbison, PLLC August 12, 2021
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2021 List

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2021 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.

by Stites & Harbison, PLLC July 26, 2021
Press Releases

Well-Known King & Schickli Intellectual Property Attorneys Join Stites & Harbison

LEXINGTON, Ky. —Stites & Harbison, PLLC announces the addition of four attorneys to the firm’s Intellectual Property & Technology (IPT) Service Group.

by Stites & Harbison, PLLC July 15, 2021