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.
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.
Trevor Graves Selected for Leadership Kentucky's Class of 2022
LEXINGTON, Ky.—Leadership Kentucky has selected Stites & Harbison, PLLC attorney Trevor Graves as a member of the 2022 Leadership Kentucky program. This year’s 51-member class will participate in seven three-day sessions from June through December at locations throughout Kentucky.
Intellectual Property in the Metaverse
The Metaverse, often characterized as the next level in the evolution of the Internet, is intended to be a virtual-reality, three-dimensional environment where users are able to interact meaningfully with not only other users but with the virtual environment itself. Mark Zuckerberg, the founder of Facebook (re-branded as Meta) has characterized the Metaverse as “an embodied internet where you’re in the experience, not just looking at it.”
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.
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.
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.
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.
Heavy Meta: Is Rebranding Worth All This?
Article by IP attorney Mari-Elise Paul in the Louisville Bar Association's Bench & Bar discussing rebranding.
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.
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.
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.
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.