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 prosecution lawyers 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 patent 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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Events

Blueprints for Innovation: Intellectual Property in the Bluegrass State

Date: 4/23/25
Time: 3:00 p.m. - 5:45 p.m.

UK Gatton Student Center Ballroom 212A, 160 Avenue of Champions, Lexington, Kentucky 40508

IP attorney Mandy Wilson Decker will join a team of panelist for this event presented by UK Innovate, the Council for Innovation Promotion (C4IP) and the Kentucky Intellectual Property Alliance (KYIPA) on Tuesday, April 23rd at UK's Gatton Student Center in Ball Room 212A.

Mandy Wilson Decker April 04, 2025
Events

Intellectual Property Virtual Seminar

Date: 4/21/25
Time: 10:00 a.m. - 11:30 a.m.

Virtual Event

IP attorney Terry Wright will be a speaker at this virtual seminar presented by Marshall University Technology Transfer Office on April 21, 2025.

Terry L. Wright April 02, 2025
Client Alerts

CAFC Affirms the Importance of Written Description in a Provisional Patent Application

On March 24, 2025, in In re Riggs, No. 22-1945, the Court of Appeals for the Federal Circuit (CAFC) addressed when the filing date of a provisional application can be relied on under 35 U.S.C. § 102(e) to support a rejection of a later-filed application. This opinion offers clarity on the importance of written descriptions in provisional patent applications for Patent Owners as well as Petitioners seeking to challenge a patent in a post-grant proceeding. Senior Patent Agent Samantha Page takes a look a the opinion in this Stites & Harbison Client Alert.

by Samantha Page Ph.D. March 28, 2025
Client Alerts

USPTO’s New Continuation Fees Prompt Strategic Shifts and Raise Pendency Concerns

With the USPTO’s implementation of new fees for certain continuation patent applications, applicants now face important strategic decisions regarding the timing and management of their filings. IP attorney Mandy Decker takes a look at the new fees in this Stites & Harbison Client Alert.

by Mandy Wilson Decker March 21, 2025
Client Alerts

Securing Global Patents: U.S. "Obviousness" vs. Chinese "Inventive Step" Standards

If you or your company have developed a new technology, filing a patent application is an important step to protect your investment. However, because patent rights are territorial, it’s often necessary to file patent applications not only in the United States, but also globally. IP attorneys James Hayne takes a look at the difference between the U.S. and the Chinese systems.

by James Hayne March 17, 2025
Client Alerts

Supreme Court Rules Trademark Plaintiffs Can Only Recover Profits from Defendants Named in the Action

On February 26, 2025, the United States Supreme Court unanimously held that a prevailing plaintiff in a trademark infringement case may recover profits only from the defendant named as a party to the proceeding, and may not also recover profits from the defendant’s affiliates who are not parties to the proceeding. Dewberry Group, Inc., fka Dewberry Capital Corp. v. Dewberry Engineers Inc., No. 23-900, _____ U.S. ____ (Feb. 26, 2025). The Court’s decision reinforced the principle of corporate separateness, but also left open the possibility that the federal trademark statute (the “Lanham Act”) might allow trial courts to consider evidence related to a defendant’s affiliates when exercising the discretion to adjust a profits award upwards or downwards for the sake of fairness. IP attorneys Alex MacKay and Sam Miller take a look at the decision in this Stites & Harbison Client Alert.

by Alexandra MacKay and Samuel F. Miller (Sam) February 27, 2025
Press Releases

2025 WTR 1000 Recognizes Stites & Harbison’s Trademark Practice

World Trademark Review (WTR) has recognized Stites & Harbison, PLLC and three attorneys in the 2025 edition of WTR 1000 – The World’s Leading Trademark Professionals.

by Stites & Harbison, PLLC February 13, 2025
Client Alerts

Changes Impacting Intellectual Property and Innovation Policies Under the New Trump Administration

Since his inauguration on January 20, 2025, President Donald Trump has implemented several initiatives that significantly impact intellectual property (IP) and innovation in the United States. IP attorney Mandy Decker takes a look at those initatives in this Stites & Harbison Client Alert.

by Mandy Wilson Decker January 22, 2025
Client Alerts

Pre-AIA Patent Applications Filed Before but Published After the Priority Date of a Challenged Patent are “Printed Publications” for IPRs

On January 14, 2025, the Court of Appeals for the Federal Circuit (CAFC) issued a ruling in Lynk Labs, Inc. v. Samsung Electronics Co. Ltd., No. 23-2346, clarifying whether a patent application that is § 102(e)(1) prior art qualifies as a prior art printed publication in an IPR proceeding. Senior Patent Agent Samantha Page and IP attorney Kimberly Vines take a look at that ruling in this Stites & Harbison Client alert.

by Samantha Page Ph.D. and Kimberly Vines Ph.D. January 21, 2025
Events

2024 INTA North America Roundtable: Annual Case Law Review - Nashville, TN

Date: 2/3/25
Time: 12:00 p.m. CST - 2:00 p.m. CST

Stites & Harbison, PLLC, 401 Commerce Street, Suite 800, Nashville, TN 37219

IP attorney Alex MacKay will lead the annual case law review for this 2025 INTA Roundtable on February 3, 2025 at the Nashville office.

Alexandra MacKay January 13, 2025
Press Releases

Trevor Graves Elected to the Lexington Humane Society’s Board of Directors

The Lexington Humane Society recently elected Stites & Harbison, PLLC attorney Trevor Graves to its Board of Directors. He will serve a six-year term ending in 2030.

by Stites & Harbison, PLLC January 10, 2025
Client Alerts

New Trademark Fees at the PTO Starting January 18, 2025

The United States Patent and Trademark Office (the “PTO”) will update its trademark fee schedule effective January 18, 2025. Alex MacKay takes at look at the changes in this Stites & Harbison Client Alert.

by Alexandra MacKay December 12, 2024
Client Alerts

IP Rights That Go Bump in the Night: Horror Inc. v. Miller

It’s that time of the year. When the wind begins to chill and the nights grow longer, serving as harbingers for the inevitable truth, spooky season is upon us. As you and your neighbors begin to adorn your homes with your favorite ghouls and goblins in celebration of All Hallows’ Eve, I’d like to remind you of another reason to celebrate. For the second consecutive year, the Governor of Kentucky, Andy Beshear, has proclaimed October as Intellectual Property (IP) month in our commonwealth. In honor of this proclamation, I will share a story of IP rights that go bump in the night—the story surrounding the Second Circuit case, Horror Inc. v. Miller, 15 F.4th 232 (2d Cir. 2021). IP attorney Donovan Gibbs takes a look at the case in this Stites & Harbison Client Alert.

by Donovan D. Gibbs II October 23, 2024
Client Alerts

October 2024 is Intellectual Property Month in Kentucky

The Governor of Kentucky has officially proclaimed that October 2024 is Intellectual Property Month! This was achieved through efforts of the Kentucky Intellectual Property Association (KYIPA), in partnership with KY Innovation, Kentucky Science and Technology Corporation (KSTC), the Kentucky Bar Association (KBA) Intellectual Property (IP) Law Section, and many other organizations in the Commonwealth. IP attorney Mandy Decker takes a look at what intellectual property is in this Stites & Harbison Client Alert.

by Mandy Wilson Decker October 23, 2024
Press Releases

Managing IP Honors James Hayne and Nick Stewart on 2024 “Rising Stars” List

Managing Intellectual Property (Managing IP) magazine has named Stites & Harbison, PLLC attorneys James Hayne and Nick Stewart to its 2024 “Rising Stars” list. This is Hayne’s third time and Stewart’s second time being honored.

by Stites & Harbison, PLLC October 16, 2024
Client Alerts

USPTO Announced Termination of its After Final Consideration Pilot Program 2.0

Citing millions of dollars in administrative costs and lack of offsetting revenue as driving factors, the United States Patent and Trademark Office (USPTO) announced on October 1, 2024, that it is terminating its After Final Consideration Pilot Program 2.0 (AFCP 2.0) effective December 14, 2024.

by Patrick M. Torre October 07, 2024
Press Releases

Stites & Harbison Expands Intellectual Property Practice with Addition of New Attorneys and Patent Agents

Stites & Harbison, PLLC is pleased to announce the addition of three attorneys and three patent agents to the firm’s Intellectual Property & Technology Service Group. All of the individuals join from one of the nation’s largest full-service intellectual property law firms. With the additions, Stites & Harbison will also be establishing a Hartford, Conn., office in the coming weeks.

by Stites & Harbison, PLLC September 12, 2024
Client Alerts

USPTO to Do a Deep Dive on Deepfakes

The United States Patent and Trademark office (“USPTO”) has stated that it will be holding a roundtable on August 5, 2024, to address whether current laws are sufficient to protect individuals from the unauthorized reproductions of their voice, image, or likeness commonly referred to as “deepfakes.” Attorney TJ Mihill takes a look at the what the USPTO is looking for in this Stites & Harbison Client Alert.

by Thomas J. Mihill (TJ) July 30, 2024
Press Releases

KBA Elects Mandy Wilson Decker and Donovan Gibbs II to Leadership Roles

The Kentucky Bar Association (KBA) recently elected two Stites & Harbison, PLLC attorneys to leadership roles in the Intellectual Property (IP) Law Section. Mandy Wilson Decker was elected Chair of the IP Law Section while Donovan D. Gibbs II was elected Vice Chair of the section. Both attorneys will serve a one-year term.

by Stites & Harbison, PLLC July 16, 2024
Press Releases

Managing IP Honors Mandy Wilson Decker for 10th Time on 2024 “Top 250 Women in IP” List

Managing Intellectual Property (Managing IP) magazine recently selected Stites & Harbison, PLLC attorney Mandy Wilson Decker to the 2024 edition of Managing IP’s “Top 250 Women in IP.” This is the 10th time Decker has been honored on this list, and she is the only attorney honored from Kentucky.

by Stites & Harbison, PLLC July 09, 2024