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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
Managing IP Honors Stites & Harbison Attorneys on “IP Stars” 2024 List
LOUISVILLE, Ky. (June 20,—Managing Intellectual Property (Managing IP) magazine has named nine Stites & Harbison, PLLC attorneys to the 2024 “IP Stars” list. Managing IP recognizes the most highly regarded intellectual property attorneys in the U.S.
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.
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.
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.
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.
Navigating Artificial Intelligence in PR and Communications
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.
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.
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.
2024 INTA North America Roundtable; Annual Case Law Review (Nashville, TN)
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.
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.
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.
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.