Intellectual Property & Technology

Patent Prosecution & Protection

Stites & Harbison's Intellectual Property and Technology (IPT) Group includes more than 20 attorneys, many of whom are Registered U.S. Patent Attorneys. We counsel clients on matters relating to domestic and international intellectual property issues, and assist them in securing domestic and international patent rights. From our Alexandria, Va. office location, our patent attorneys can easily visit the United States Patent & Trademark Office and advocate in person for our client's inventions.

Our clients include independent inventors, Internet and biotech start-ups, established brick-and-mortar businesses and universities.

Our patent attorneys have prosecuted patent applications covering a wide range of technologies, from simple mechanical devices to complex software packages, biotechnological inventions, and business methods.

The IPT Group not only prosecutes patent applications; we also assist clients in protecting existing patent rights, and in developing and implementing intellectual property protection plans. Our attorneys regularly issue validity, infringement, right-to-use, and patentability opinions. They also negotiate licenses and technology transfer agreements, and manage and conduct litigation to protect and enforce the patent rights.

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What others are saying about us

No matter the office . . . I can expect to receive the same outstanding service and excellent work product from Stites & Harbison. They have personable attorneys and staff with a broad range of subject matter expertise.

This comment was collected as part of the U.S. News — Best Lawyers® "Best Law Firms" research process. (2018-19)
See more related to Patent Prosecution & Protection
Client Alerts

Defendants Caught Red-Handed in Patent Infringement Case Get Five Months of Damages Wiped Out for Patentee’s Failure to Mark Its Products

In early September of 2021, the Court of Appeals for the Federal Circuit clarified the notice requirement of 35 U.S.C. § 287. Patentee’s seeking to recover damages on unmarked goods must ensure their notice to a potential infringer is an actual notice of infringement and not merely notice of a patent.

by Samuel A. Raque (Sam) December 09, 2021
Press Releases

Stites & Harbison Strengthens Intellectual Property Practice with Addition of John Teresinski

ALEXANDRIA, Va.—Stites & Harbison, PLLC welcomes attorney John P. Teresinski to the Alexandria, Va., office as a Member (Partner) with the firm.

by Stites & Harbison, PLLC December 03, 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 Welcomes Samuel Raque

NASHVILLE, Tenn.—Stites & Harbison, PLLC welcomes attorney Samuel A. Raque to the firm’s Nashville, Tenn., office. He joins the Intellectual Property & Technology Service Group as a Registered Patent Attorney.

by Stites & Harbison, PLLC October 29, 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
Events

AIPLA's Eleventh Annual Trademark Boot Camp

Date: 8/30/21 - 9/2/21

Webinar

IP attorney Joel Beres is set to speak at the AIPLA's 11th Annual Trademark Boot Camp webinar Aug. 30-Sept.2, 2021.

Joel T. Beres August 19, 2021
Press Releases

KYIPA Names Mandy Wilson Decker to Executive Advisory Committee

LOUISVILLE, Ky.—Kentucky Intellectual Property Alliance (KYIPA) names Stites & Harbison, PLLC attorney Mandy Wilson Decker to its Executive Advisory Committee.

by Stites & Harbison, PLLC August 11, 2021
Press Releases

Managing IP Selects Mandy Wilson Decker to 2021 “Top 250 Women in IP” List for Seventh Time

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine recently selected Stites & Harbison, PLLC attorney Mandy Wilson Decker to the 2021 edition of Managing IP’s “Top 250 Women in IP.” This is the seventh time Decker has been honored on this list, and she is the only attorney honored from Kentucky.

by Stites & Harbison, PLLC July 26, 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
Press Releases

James Hayne Selected for Ignite Louisville Class of Fall 2021

LOUISVILLE, Ky.—The Leadership Louisville Center has selected Stites & Harbison, PLLC attorney James Hayne to participate in the Ignite Louisville Class of Fall 2021.

by James Hayne April 28, 2021
Articles

Looking Through the Leadership Lens: Trademark Office Leadership in an Evolving Landscape

INTA recently premiered its first webcast in its “Looking Through the Leadership Lens” series, which features industry officials providing unique perspectives on leadership and development topics. INTA News article by Mari-Elise Paul.

by Mari-Elise Paul April 14, 2021
Articles

International Women’s Day: ‘choosing to challenge’ and the fight for gender equality

Leading female attorneys share their thoughts with WIPR about what the campaign theme means to them, the issues affecting women in IP and their efforts to tackle them. Louisville office IP attorney Mari-Elise Paul is included in this article.

by Mari-Elise Paul March 09, 2021
Trademarkology

Is Peloton Spinning Its Wheels? Peloton Petitions to Cancel “SPINNING” Registrations

Peloton Interactive, Inc. cranked up the resistance against Mad Dogg Athletics, Inc.’s tactics of aggressively enforcing its registrations of SPIN and SPINNING. Pressing down on the red button, so-to-speak, Peloton filed petitions to cancel Mad Dogg’s registrations of SPINNING, SPIN, and SPIN PILATES on the ground that “SPINNING” and “SPIN” are generic.

by Mari-Elise Paul February 19, 2021
Trademarkology

Aspects of the Trademark Modernization Act: Letters of Protest

On December 27, 2020, the Trademark Modernization Act of 2020 (the “Act”) was signed into law. The Act introduces a number of changes to trademark law that may be of interest to brand owners. This post will examine just one, and future posts will examine others.

by Alexandra MacKay January 25, 2021