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 prosecution 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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Client Alerts

USPTO Updates Guidance Due to Federal Circuit’s Adoption of Same Obviousness Test for Utility and Design Patents

On May 21, 2024, the Federal Circuit issued an en banc decision in LKQ Corp. v. GM Global Technology Operations LLC, No. 2021-2348, eliminating the long-established test for proving design patents invalid for being obvious as "improperly rigid" in favor of a more flexible approach. In doing so, it decided the same test for utility patent obviousness applies to design patents. IP attorney Trevor Graves takes a look at the case in this Stites & Harbison Client Alert.

by Trevor T. Graves May 28, 2024
Press Releases

Junior Achievement of Kentuckiana Appoints Donovan D. Gibbs II to Advisory Board

Junior Achievement of Kentuckiana recently appointed Stites & Harbison, PLLC attorney Donovan D. Gibbs II to its Young Professionals Advisory Board.

by Stites & Harbison, PLLC May 22, 2024
Press Releases

Stites & Harbison Earns 2024 Top 10 Listing in Patent Lawyer Magazine

The Patent Lawyer Magazine has named Stites & Harbison, PLLC to the 2024 Top 10 Patent Firms and IP Practices in North America – South list. This is the firm’s third year being honored.

by Stites & Harbison, PLLC May 10, 2024
Client Alerts

Who Owns TRAVIS KELCE?: An Example of the Legal Issues that Arise When Related Entities Apply for Similar Trademarks

The Lanham Act bars the registration of similar trademarks (or “marks”) that are likely to cause confusion with existing marks registered with the United States Patent and Trademark Office (“USPTO”). This concept of “likelihood of confusion” is a foundational principal of trademark law and one of the most beneficial aspects of acquiring a federal registration. IP attorney Donovan Gibbs takes a look at those benefits in this Stites & Harbison Client Alert.

by Donovan D. Gibbs II May 08, 2024
Events

Navigating Artificial Intelligence in PR and Communications

Date: 3/21/24
Time: 11:30 a.m. - 1:00 p.m.

Flash Cube Building, 9300 Shelbyville Road, 2nd Floor Community Room, Louisville, KY

The March PRSA Program entitled "Navigating Artificial Intelligence in PR and Communications," is a panel discussion surrounding the utilization of AI in communications and will feature Stites & Harbison IP attorney, Nick Stewart, who is a Registered Patent Attorney.

Gary N. Stewart (Nick) March 08, 2024
Client Alerts

Is That Tattoo Infringing? The Complicated Copyright Questions Surrounding Tattoos

Tattoos have been at the core of several copyright cases over the last few years. One of the earliest well-known examples was a suit by Mike Tyson’s tattoo artist over the use of Tyson’s face tattoo design in the movie The Hangover Part II, which settled out of court in 2011. However, several more recently undecided cases have raised issues tied to tattoos and copyright infringement. TJ Mihill takes a look at this issue in the latest Stites & Harbison Client Alert.

by Thomas J. Mihill (TJ) February 15, 2024
Press Releases

Stites & Harbison Welcomes Donovan D. Gibbs II to the Louisville Office

LOUISVILLE, Ky.—Stites & Harbison, PLLC welcomes attorney Donovan D. Gibbs II to the firm based in the Louisville, Ky., office. He joins the Intellectual Property & Technology Service Group.

by Stites & Harbison, PLLC January 29, 2024
Events

2024 INTA North America Roundtable; Annual Case Law Review (Nashville, TN)

Date: 1/31/24
Time: 12:00 p.m. - 2:00 p.m.

401 Commerce Street, Suite 800, Nashville, TN 37219

IP attorney Alex MacKay will co-host this roundtable in the firm's Nashville office on January 31, 2024.

Alexandra MacKay January 23, 2024
Client Alerts

USPTO Issues Enablement Guidelines Following Amgen v. Sanofi

On January 10, 2024, the United States Patent and Trademark Office (USPTO) released Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al. The Guidelines are intended to inform U.S. patent examiners and the public about the process to be followed when assessing whether a claim satisfies the enablement requirement under 35 U.S.C. 112(a), after the U.S. Supreme Court’s holding in Amgen v. Sanofi. IP attorney Patrick Torre takes a look at the guidelines in this Stites & Harbison Client Alert.

by Patrick M. Torre January 17, 2024
Client Alerts

Gifts from the USPTO for Prospective Patentees Heading into the New Year

Irrespective of the Naughty and Nice List, the United States Patent and Trademark Office (“USPTO”) has rolled out a series of programs over the course of 2023 that may serve to make the spirits of the inventors in your lives merrier and brighter heading into the new year. IP attorney Nick Stewart takes a look at those programs in this Stites & Harbison Client Alert.

by Gary N. Stewart (Nick) December 27, 2023
Client Alerts

Monetizing Intellectual Property: The Basics and Benefits of Licensing

Owners of intellectual property (“IP”) rights associated with inventions and creative works have discovered that “licensing” is an effective way to monetize their IP. IP attorney Scot Duval takes a look at the ways to do that in this Stites & Harbison Client Alert.

by Scot A. Duvall December 18, 2023
Client Alerts

The Basics of Trademark Law and the Benefits of Federal Registration

A trademark is any word, phrase, symbol, logo, or design – or any combination – used to identify and distinguish the source of the goods or services of one party from those of others. A trademark may be a word or words (APPLE or POLO), logos or designs (the Nike swoosh or Adidas’ three stripes), phrases (IT’S FINGER LICKIN’ GOOD or I’M LOVIN’ IT), shapes of containers or other trade dress (the BLANTON’S bourbon bottle shape), or even a color (HOME DEPOT orange) or sound (NBC chimes). IP attorney Trevor Graves takes a look at the benefits of registration in this Stites & Harbison Client Alert.

by Trevor T. Graves December 14, 2023
Press Releases

Delta State University Inducts Richard Myers into Alumni Hall of Fame

NASHVILLE, Tenn.—Delta State University’s Alumni Association recently inducted Stites & Harbison, PLLC attorney Richard S. Myers, Jr., into the university’s Alumni Hall of Fame.

by Stites & Harbison, PLLC November 28, 2023
Client Alerts

President Issues Landmark Executive Order on Artificial Intelligence and Directives for the U.S. Patent and Trademark Office

On October 30, 2023, President Joe Biden issued a landmark executive order (the Order) directed to promoting use and managing risks of artificial intelligence (AI). The order recognizes the vast potential of AI and directs sweeping actions to protect against the risks of AI. Attorney John Teresinski takes at look at the order in this Stites & Harbison Client Alert.

by John P. Teresinski November 22, 2023
Client Alerts

The Evolution of "Hybrid": Post-COVID Collaborative Working

Stephen Weyer takes a look at what the word "hybrid" means in today's world in this Stites & Harbison Client Alert.

by Stephen J. Weyer November 03, 2023
Client Alerts

What 70% of Americans Don’t Understand About Intellectual Property

Mandy Decker takes a look at the different types of intellectual property in this Stites & Harbison Client Alert.

by Mandy Wilson Decker October 26, 2023
Events

Kentucky Association of Manufacturers (KAM) 2023 Manufacturers Summit

Date: 11/1/23 - 11/3/23

Knicely Conference Center, 2355 Nashville Road, Bowling Green, Kentucky 42101

IP attorney Mandy Decker will be a speaker at this year's 2023 KAM Manufacturers Summit in Bowling Green, Kentucky on Nov. 1-3, 2023.

Mandy Wilson Decker October 26, 2023
Press Releases

Managing IP Honors James Hayne and Nick Stewart on 2023 "Rising Stars" List

LOUISVILLE, Ky.—Managing Intellectual Property (Managing IP) magazine has named Stites & Harbison, PLLC attorneys James Hayne and Nick Stewart to its 2023 “Rising Stars” list.

by Stites & Harbison, PLLC October 10, 2023
Client Alerts

The Supreme Court Helps Copyright Owners by Limiting Fair Use in Warhol Foundation v. Goldsmith

In May, the Supreme Court issued a narrow decision on the issue of fair use in copyright infringement cases. The case, Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, strengthened the position of potential plaintiffs – a little.

by John W. Scruton October 04, 2023
Client Alerts

Beat the Heat with These Five Patented Ideas

Patent attorney James Hayne take a look at five patents to help beat the heat!

by James Hayne September 21, 2023