Patent Prosecution & Protection

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.

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.

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.”

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.

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.

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.

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.

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.

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.

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

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.

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.

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.

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.

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