Valley Forge, PA | January 2015 – RatnerPrestia Shareholder Christopher R. Lewis will moderate a panel at the 2015 AIPLA Mid-Winter Institute on January 28, 2015. He will lead the Opening Plenary Session entitled Establishing Licensing in an IP Program and Partnering to Obtain or Procure IP. The panel will discuss topics including developing and monetizing an IP portfolio in today’s changing times, crowd-sourcing, and alternative pathways of transferring IP. The panelists include the Chief IP Counsel of a large international pharmaceutical company, IP Counsel of a leading equipment manufacturer, and an experienced U.S. licensing attorney. The 2015 AIPLA Mid-Winter Institute will be held in Orlando, Florida from January 28 – 31. For more information click here.

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The U.S. Supreme Court ruled on a substantive trademark matter for the first time in ten years, holding in Hana Financial, Inc. v. Hana Bank (No. 13-1211) that trademark tacking is a factual determination properly reserved for the jury (the fact finder). This ruling resolved a split in the Circuits regarding who properly decides trademark tacking, the judge or jury.

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The U.S. Supreme Court issued a landmark decision today in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (No. 13-854), altering the standard used by the Federal Circuit since 1998 to review claim construction determinations on appeal. This ruling is the latest in a series of recent Supreme Court decisions reversing practices previously established by the Federal Circuit.

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Washington, D.C. | January 2015Sunjeev S. Sikand has been selected to serve as Vice Chair of the U.S. Patent Office Practice Committee for the Intellectual Property Owners Association during the 2015 year. The Committee works to improve patent office practices in the U.S. Patent and Trademark Office. As Vice Chair of the Committee, Mr. Sikand will focus on changes in patent practice proposed by the U.S. Patent and Trademark Office for adoption and recommend to the Intellectual Property Owners Association comments on such suggested changes in patent practice. Since 2008, Mr. Sikand has been a dedicated member of the Intellectual Property Owners Association.

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RatnerPrestia Shareholder Brian P. O’Shaughnessy will serve as a faculty member for LES USA & Canada’s Exam Review Course for the Certified Licensing Professional (CLP) Exam. The Course will be presented February 22, 2015 in New Orleans, LA in conjunction with the Annual Meeting of the Association of University Technology Managers (AUTM). This condensed one-day review course aims to prepare licensing professionals for the successful completion of the CLP certification exam. CLP certification is administered by CLP, Inc., an independent 501(c)(3) organization. The CLP certification is a credential establishing competence in the field of technology licensing, and particularly contract drafting and compliance, intellectual property law, intellectual asset management, and the marketing and valuation of technology and IP. The CLP Exam Review Course is taught by experienced LES members, and includes a review of curriculum-based professional development material otherwise available from LES USA & Canada.

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This article appeared in the January 2015 Edition of IP Today
Every day, businesses throughout the world are served with a patent infringement complaint. In nearly all cases, a question over patent validity arises. Disputing patent validity in federal court, however, can be a costly undertaking.

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Should your company spend additional resources to file a new patent application for purely defensive purposes? How should you respond to a cease and desist letter claiming that your company’s product, which has been commercially available for the past five years, is infringing a patent that issued only two years ago? Should your company file a new patent application or retain the invention as a trade secret? Should your company take a license from a U.S. university? When faced with such questions, the enhanced Prior User Rights Defense must be considered. While this defense is not new, it was significantly expanded by the America Invents Act (AIA) and may impact your company’s IP strategy.

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Written By: John W. McGlynn
Many choose the beginning of the year to take stock and make changes personally and professionally. We clean out and re-organize closets, revisit and make budgets, and adopt new diet and exercise regimens. Why not do the same with your trademark portfolio?

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Shareholder Brian P. O’Shaughnessy will appear as a panelist in the D.C. Bar’s Intellectual Property Law Section “Young Lawyer Survival Series” on January 21, 2015. In this kick-off session of the Series the panelists will offer tips and techniques for effective legal drafting. Mr. O’Shaughnessy, who also serves as Regional Vice President, USA, of the Licensing Executives Society (USA and Canada), Inc., will share insights on drafting effective IP license agreements. Also appearing on the panel are: Rachel Elsby, Law Clerk to the Honorable Pauline Newman, U.S. Court of Appeals for the Federal Circuit, who will offer perspectives on persuasive writing in litigation; and Jeffrey Fougere, Patent Counsel, Hewlett-Packard, who will share his extensive experience drafting complicated patent prosecution-oriented documents. The program is sponsored by the Young Lawyers Committee of the D.C. Bar Intellectual Property Law Section. Click here for more information or to register.

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