Intellectual Property & Technology
As a full-service group whose practice spans the globe, Stites & Harbison’s Intellectual Property and Technology (IPT) Group counsels and represents both domestic and international clients across the full range of intellectual property including patents, trademarks, copyrights, trade secrets, and licensing.
All businesses have intrinsic value in the creativity, invention, and innovation that makes them unique. In order to reach full commercial potential, however, an idea, product, or service must be properly protected. What distinguishes Stites & Harbison is our commitment to fully understanding not only our clients’ intellectual property but also their business and the markets in which they compete. This allows us to provide the greatest return on our clients’ intellectual property assets.
Our intellectual property lawyers provide effective and efficient counsel from the creation and registration of intellectual property assets through the management and enforcement of intellectual property rights both in the United States as well as internationally.
Members of the IPT group possess technical experience and hold advanced degrees across a wide variety of fields including engineering, biology and life sciences, chemistry, and computer science. Through our office in Alexandria, VA, our intellectual property attorneys can easily visit the United States Patent & Trademark Office to advocate for our clients in person.
Transactional Services
In addition to securing patents, trademarks, and copyrights at the state, national, or international level, Stites & Harbison’s IPT Group also assists in developing and implementing intellectual property protection plans which are tailored for each client, whether an independent inventor, start-up, well-established business, or university. We work to maximize the value of our clients’ intellectual property through licensing agreements, sponsorship agreements, and other relationships with third parties. We draft and negotiate the appropriate terms related to the intellectual property, whether they are central to or incidental to a larger transaction. When needed, we also issue validity, infringement, and right-to-use opinions regarding our clients’ or a third-party’s intellectual property.
Litigation Services
Stites & Harbison’s IPT Group has extensive experience litigating intellectual property matters before federal and state courts throughout the nation. This experience also extends to all levels of appeals, including the United States Supreme Court. Our firm's litigators aggressively protect the intellectual property assets of our clients, and defend those who have been wrongfully accused of infringing others’ intellectual property rights. The firm has handled a number of significant and well-known intellectual property disputes and has served as lead counsel in intellectual property litigation in more than 30 states. Examples of our IPT group’s work can be found here.
Stites & Harbison have given us timely and insightful advice on a range of litigation/IP matters in the USA in recent years.
I have worked with a number of patent law firms in the past, and ... Stites & Harbison far exceed any other firm in their responsiveness, knowledge of the pharmaceutical / biotechnology field, flexibility and commitment. They work closely with you to make sure the applications are accurate, strong and well presented. In addition, they not only manage the entire process, but provide strategic input and are impeccable in their follow-up. They have a global network, and draw upon resources as required to address the needs of their clients.
Stites & Harbison has displayed an in-depth knowledge of patent law and has been very helpful in navigating us through the process.
EEOC and DOJ Issue Guidance Regarding DEI in the Workplace
On March 19, 2025, the Equal Employment Opportunity Commission and the Department of Justice issued two technical assistance documents regarding “diversity, equity, and inclusion” (“DEI”) programs in the workplace. Consistent with the Trump Administration’s Executive Orders regarding DEI, these technical assistance documents warn of the potential illegality of certain employment policies or initiatives under Title VII of the Civil Rights Act of 1964. Robin McGuffin takes a look at the guidance recommended in this Stites & Harbison Client Alert.
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.
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.
UPDATE: FinCEN and Treasury Department Announce They Will Not Enforce CTA Despite March Deadline
There is yet another update with respect to the Corporate Transparency Act (the “CTA”). Less than two weeks after the U.S. Treasury Financial Crimes Enforcement Network (“FinCEN”) set a new deadline for CTA compliance, both FinCEN and the U.S. Department of Treasury issued separate press releases announcing their intent to not enforce the CTA until new rules are finalized. Stites & Harbison's Corporate Transparency Act Committee takes a look at the update in this Stites & Harbison Client Alert.
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.
UPDATE: Corporate Transparency Act Back on as Potential Changes Loom
Compliance with the Corporate Transparency Act (the “CTA”) is no longer voluntary. Businesses subject to the CTA, which includes the majority of entities formed or registered to do business in the United States, will have until March 21, 2025, to file their beneficial ownership information reports with the U.S. Treasury Financial Crimes Enforcement Network (“FinCEN”).
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.
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.
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.
2024 INTA North America Roundtable: Annual Case Law Review - Nashville, TN
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.
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.
University Wins Jury Verdict Over Online Retailer for Trademark Infringement
A trial over a trademark dispute relating to an unlicensed online retailer’s sale of apparel and other merchandise bearing historic or retro logos and images of universities has concluded. In 2021, the Pennsylvania State University (“Penn State”) brought suit against Vintage Brand (“Vintage”) for trademark infringement and other claims in federal court in the Middle District of Pennsylvania, styled as The Pennsylvania State University v. Vintage Brand, LLC et al., 4:21-cv-1091. Since that time, at least a dozen other schools have sued Vintage on similar grounds, but this was the first case to go to trial and it has been watched intently by the trademark world as a bellwether case in the sports merchandising industry landscape and perhaps beyond.
Kentucky Super Lawyers Honors 47 Stites & Harbison Attorneys for 2025
The 2025 edition of Kentucky Super Lawyers recently honored 47 Stites & Harbison, PLLC attorneys in the Covington, Frankfort, Lexington and Louisville, Ky., offices. The publication named 34 attorneys to the Super Lawyers list and 13 attorneys to the Rising Stars list.
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.
Future of the Corporate Transparency Act is Uncertain
With the January 1, 2025, deadline for beneficial ownership information filings pursuant to the Corporate Transparency Act (the “CTA”) for entities formed prior to 2024 rapidly approaching, Judge Amos L. Mazzant III of the US District Court for the Eastern District of Texas preliminarily enjoined the enforcement of the CTA and its related regulations nationwide. Alison Zeitlin takes a look at what is happening in this Stites & Harbison Client Alert.
Ten Stites & Harbison Attorneys Honored by 2024 Mid-South Super Lawyers
The 2024 edition of Mid-South Super Lawyers recently honored 10 Stites & Harbison, PLLC attorneys. Seven attorneys were named to the Super Lawyers list and three were named to the Rising Stars list.
Stites & Harbison Welcomes Nine Attorneys to Kentucky and Georgia
Stites & Harbison, PLLC announces the addition of nine attorneys to the firm. Four attorneys join the Louisville, Ky., office: Rachel Gumbel, Jackson B. Hurst-Sanders, James E. Myers and April M. J. Sain. Harper B. Anderson, Holly A. Couch and Robert H. Dean join the firm in Lexington, Ky., while Mackenzie Miller and Lauren Towell (Ren) join the Atlanta office.
Regulated Products: What Manufacturers and Retailers Need to Know Now
Stites & Harbison attorneys Warren Schickli and Drake Staples take at a look at what manufacturers and retailers need to know in this Stites & Harbison complimentary webinar series focused on forever chemicals and what businesses need to do.
Stites & Harbison Earns 93 Rankings in 2025 Best Law Firms®
Stites & Harbison, PLLC has been ranked in the 2025 edition of Best Law Firms®. The firm’s National Tier 1 rankings include: Litigation – Construction, Litigation – Real Estate, and Trademark Law. The firm’s overall results include 93 metropolitan rankings in six regions and represent 52 legal practice areas.
Forever Chemicals: Breaking Down Insurance Coverages
Neil Barton and Charles Stopher present an overview of available insurance coverage and potentially applicable exclusions to the increased risk of PFAS exposure in the third session of Stites & Harbison's webinar series "Forever Chemicals: What does your business need to know and do?".