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.

Main Contacts
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
Press Releases

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.

by Stites & Harbison, PLLC June 28, 2022
Press Releases

Managing IP Selects Mandy Wilson Decker to 2022 “Top 250 Women in IP” List for Eighth Time

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine recently selected Stites & Harbison, PLLC attorney Mandy Wilson Decker to the 2022 edition of Managing IP’s “Top 250 Women in IP.” This is the eighth time Decker has been honored on this list, and she is the only attorney honored from Kentucky.

by Stites & Harbison, PLLC June 13, 2022
Press Releases

Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2022 List

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2022 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.

by Stites & Harbison, PLLC June 08, 2022
Press Releases

Virginia Super Lawyers 2022 Honors John Teresinski

ALEXANDRIA, Va.—The 2022 edition of Virginia Super Lawyers recently honored Stites & Harbison, PLLC attorney John Teresinski. He was named to the Rising Stars list.

by Stites & Harbison, PLLC June 03, 2022
Client Alerts

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.”

by Patrick M. Torre June 01, 2022
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
Client Alerts

Recent Patent Program Updates by the United States Patent and Trademark Office

USPTO Launches New Pilot Program to Improve Efficiency of Utility Patent Application Examination. In response to concerns expressed by way of a letter sent from Senators Thom Tillis (R-NC) and Tom Cotton (R-AR), the United States Patent and Trademark Office (“USPTO”) has launched a “Deferred Subject Matter Eligibility Response (DSMER) Pilot Program” for non-provisional patent applications.

by Patrick M. Torre February 11, 2022
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 Stites & Harbison, PLLC 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