Intellectual Property

Legal Solutions from a Business Perspective

Intellectual property rights are vital assets for every business. From startups to global corporations, we help you protect and enhance the value of these assets. We advance your goals by offering comprehensive IP solutions from a practical business perspective.

Tarter Krinsky & Drogin’s Intellectual Property Practice assists clients in protecting and maximizing their intellectual property. With our full service platform, our attorneys collaborate across practice areas to address your most critical business matters. Through strong relationships with a network of associates, we offer protection for the global interests of companies in a variety of industries, including tech, life sciences, luxury goods and consumer products.

Patent, Trademark and Copyright
Armed with deep technical and legal expertise, we advise clients on all intellectual property matters, including patent, trademark and copyright prosecution, IP-related transactions, due diligence, conducting product clearances, negotiating license agreements, protecting our clients under the Digital Millennium Copyright Act and preparing opinions on infringement, validity and enforceability issues. We represent you in US Patent and Trademark Office interference, reexamination, post-grant, opposition and cancellation proceedings.

Our attorneys have decades of practical experience litigating patent infringement cases involving diverse technologies ranging from pharmaceuticals to consumer products to telecommunications. Our experience in copyright cases is equally diverse, including music rights, advertising copy and motion picture rights. Our trademark litigation practice has involved enforcement of the trademark for a blockbuster quality of life drug, enforcement
of restaurant names and trade dress and defense of retailers’ names and trade dress.

Hatch-Waxman
We help pharmaceutical companies navigate the Hatch-Waxman process from early development to sales. Our team of pharma counselors and litigators provide seasoned advice on patent certification and regulatory issues including market opportunities,
searches, opinions, settlements and litigation.

Litigation
From asserting your rights against potential infringers to defending you against charges of alleged infringement, our lawyers litigate in bench and jury trials and appeals courts
throughout the United States.

Internet Law
With attorneys who have founded several tech companies, we bring unique insight to the industry. We advise on CAN-SPAM and Communications Decency Act compliance,
advertising, domain name registrations, video marketing, search engine optimization, sweepstakes, website development, affiliate, co-branding and hosting agreements, as well as privacy policies and website terms of use.

China Practice
Tarter Krinsky & Drogin’s China practice assists U.S. and Chinese companies and investors entering or operating in the United States and in China. From emerging businesses to global corporations, our clients do business in a variety of industries including pharma, chemical, products, food and beverage.

Pharmaceutical and Biologics
We represent a broad range of pharmaceutical and biologics companies on patent issues, the complex Hatch-Waxman process, trademark and trade dress, and litigation. Read more about our Pharmaceutical and Biologics experience.

Name Title Direct Dial Vcard
Braginsky, Philip Partner Partner 212.216.8065 VCard
Dennehy, Matthew T. Associate Associate 212.216.1128 VCard
Douglas, Rosemary Paralegal Paralegal 212.216.1137 VCard
Formicola, Susan Paralegal Paralegal 212.216.1149 VCard
Goldsmith, Amy B. Partner Partner 212.216.1135 VCard
Lin, Rachel J. Counsel Counsel 212.216.1152 VCard
Linn, Janet B. Counsel Counsel 212.216.8067 VCard
Lippert, Nels T. Counsel Counsel 212.216.1157 VCard
Rosenberg, Mark J. Partner Partner 212.216.1127 VCard
Shravah, Aasheesh Counsel Counsel 212.216.1132 VCard
Tenenbaum, Alan Partner Partner 212.216.1166 VCard
Xia, Jing Partner Partner 212.216.1158 VCard
  • Grandma Press

    Driven by her lifelong commitment to education, Dr. Marie Amoruso decided to explore the impact of the controversial “Common Core” standardized curricula and tests that are used to assess K-12 student achievement. She filmed interviews with an array of parents, administrators, teachers and professors to create the documentary “More…than a score.” Dr. Amoruso needed assistance to make her film project take flight and reach her audiences.

  • The Hartz Mountain Corporation

    The Hartz Mountain Corporation is one of the world’s largest manufacturers and sellers of pet products, sold through over 40,000 brick and mortar retailers in the US and Canada as well as online. With over 1,500 pet care products, its business success significantly depends on creating differentiated product lines, immediately recognizable brands and a strategic plan to minimize conflicts with competitors.

  • I Love Sugar

    I LOVE SUGAR is much more than a candy store. The high-end retailer takes the candy we all love and delivers a magical experience. State of the art design, including custom fixtures and attention to details, is what the experiential retailer believes makes shoppers often refer to I LOVE SUGAR as "the Apple store of candy". In a trade dress and trademark infringement case brought by their competitor, It’Sugar claimed that I LOVE SUGAR infringed their trademark and the overall look and feel of It’Sugar retail stores.

  • Advertising Week

    As the world’s premier gathering of marketing and communications leaders, Advertising Week is a hybrid of inspiring thought leadership and highly entertaining and engaging special events, featuring the industry’s best and brightest. Drawing from the brand, agency, technology, startup, media and broader cultural communities, Advertising Week is designed to move the needle on key industry challenges and influence the global industry.

  • U.S. Supreme Court Broadens the Territorial Scope of Patent Damages
    July 20, 2018

    In a 7-2 decision, its first to address the extraterritorial scope of patent damages since passage of the modern patent act, the U.S. Supreme Court in WesternGeco LLC v. Ion Geophysical Corp., No. 16-1011 (June 22, 2018), held a patentee can recover its foreign lost profits as damages.

  • California Leads the Way with a New Data Privacy Law
    July 2, 2018

    On June 28, the California legislature passed the California Consumer Privacy Act, the toughest data privacy law in the country. The law, which will take effect in 2020, imposes new requirements on businesses in an approach similar to the recently passed European General Data Protection Regulation (GDPR). It aims to put ownership and control of personal information back in the hands of consumers, and to hold businesses accountable for any data security breaches.

  • Supreme Court Says Remote Taxation Is Permitted: Online Sellers Must Collect State Taxes
    June 22, 2018

    In a closely watched case involving South Dakota’s 2016 law requiring the collection of state sales tax by out of state retailers who have no physical presence in the state, in a 5 to 4 decision, the Supreme Court yesterday decided to overturn two of its older decisions prohibiting the practice in South Dakota v. Wayfair, Inc. No. 17-494. Many states have been waiting for this decision and are likely to pass their own remote taxation laws, and online sellers will then need to collect and remit tax to each such state.

  • Preparing for GDPR: Steps to Take Today
    May 17, 2018

    The European Union has enacted a new General Data Protection Regulation (GDPR) that will take effect on May 25, 2018 regarding how businesses, wherever they are located around the world, must manage the personal data of European "data subjects."

  • Key Takeaways from the Sixth Annual Best Practices in IP Conference
    May 3, 2018

    The Sixth Annual Best Practices in IP Conference in Tel Aviv, which covered global best practices for issues affecting companies' IP, was another great success. Attendees benefited from top-notch educational opportunities and introductions to innovative companies.

  • The Top Five Intellectual Property Inquiries From Consumer Product Businesses at the ASD Market Week and SourceDirect Trade Shows
    May 1, 2018

    I recently had the opportunity to speak about intellectual property (IP) issues at ASD Market Week, a twice-yearly B2B trade show featuring a wide range of retail merchandise, and SourceDirect, a wholesale trade show for global sourcing professionals such as importers, distributors, wholesale manufacturers and product development companies. Topics covered included domestic and international IP filings, clearing products to avoid IP infringement, IP litigation and indemnification for IP infringement.

  • IP in the Boardroom: When Does the Board Receive Warning?
    April 18, 2018

    Intellectual property can present operational risks - knowledge and protocols can help.

  • IP in the Boardroom: As Company IP Value Increases, So Do Related Risks
    February 26, 2018

    Although one might occasionally come across an article touching on intellectual property (IP) concerns in the corporate boardroom, not enough has been said on this topic. This is the first in a series of articles that are designed to help board members satisfy their duties of care regarding the various risks that IP often carries.

  • Patenting and the New FDA Guidance on 3-D Printing of Medical Devices
    January 25, 2018

    The U.S. Food and Drug Administration (FDA) recently finalized its publication on additive manufacturing (commonly referred to as 3-D printing) for medical devices.According to FDA Commissioner Scott Gottlieb, the guidance is meant to "help manufacturers bring their innovations to market more efficiently by providing a transparent process for future submissions and making sure our regulatory approach is properly tailored to the unique opportunities and challenges posed by this promising new technology."

  • State University's Filing of Patent Infringement Action Waives Sovereign Immunity to IPR Proceedings
    January 11, 2018

    The PTAB (Patent Trial and Appeal Board) of the USPTO recently issued a decision that a filing of a patent infringement action by a public university waives sovereign immunity to inter partes review (IPR) proceedings in the USPTO.

  • Why Chinese Companies Need to Exercise Caution When Attending Trade Shows in the United States
    December 20, 2017

    Over the past few years, owners of U.S. patents and trademarks have used the appearance of Chinese companies at a trade show as infringement "traps." These patent owners have commenced infringement cases against Chinese companies based on those companies' activities at the trade show.

  • Mark Rosenberg Authors Article in Modern Aesthetics on Handling Negative Reviews in the Internet Age
    December 12, 2017

    Mark Rosenberg, Intellectual Property partner and Reputation Management practice co-chair, recently authored an article for Modern Aesthetics magazine titled, "Handling Negative Reviews in the Internet Age." In the article, Mark explores how physicians can protect themselves against negative reviews posted to Internet sites such as Healthgrades, Vitals or Yelp, noting that these reviews "can damage a doctor’s reputation and can have significant ramifications for his or her practice."

  • FDA Includes Patent Submission Date Updates in Orange Book
    December 10, 2017

    The U.S. Food and Drug Administration (FDA) recently updated the Orange Book to include patent submission dates. A patent submission date is the date the FDA receives patent information from the NDA holder. For each patent that claims a drug substance (active ingredient), drug product (formulation and composition), or method of use, the FDA requires all NDA applicants to submit the detailed patent information provided for under on 21CFR314.53. Now, the dates of these submissions are being recorded and published by the FDA.

  • New FDA Guidance on Determining Whether to Submit an ANDA or a 505(b)(2) Application
    December 4, 2017

    The U.S. Food and Drug Administration (FDA) recently published a draft guidance summarizing the differences between abbreviated new drug applications (ANDA) and 505(b)(2) applications. Both sections were added to the FD&C Act to provide new routes for obtaining approvals for drug applications. The guidance focuses on ANDA submissions under Section 505(j) of the FD&C Act, petitioned ANDAs under Section 505(j)(2)(C), and NDAs pursuant to Section 505(b)(2) and discusses the regulatory and scientific considerations for determining whether to file an ANDA or 505(b)(2) application.

  • 2017 European Patent Office Updates
    December 4, 2017

    The European Patent Office recently revised its Examination Guidelines. These Guidelines are primarily directed to the patent examiners and formalities officers of the EPO, but they are also helpful to anyone practicing before the EPO. This year the update contains a few important changes.

  • License Agreement Restrictions Can Provide a Real Advantage to Patent Holders
    November 20, 2017

    Generally, a patent owner's rights are exhausted after an authorized sale; the patent owner cannot sue a downstream customer who purchased an authorized patented product from a third party reseller. So how can a patent owner control the resale of a patented product?

  • Amy Goldsmith Authors Intellectual Property Poems for the New York State Bar Association’s Corporate Counsel Publication
    October 27, 2017

    Intellectual Property co-chair Amy Goldsmith wrote “IPoems: Lessons from the World of Intellectual Property” for Inside, a publication of the corporate counsel section of the New York State Bar Association.

  • Your State or Mine: Patent Lawsuits Can Now Only Be Brought Where Corporations Have Physical Locations
    October 3, 2017

    For decades, companies have been subject to patent infringement lawsuits almost anywhere that they had sales, whether through a physical store or online. Often, based on online sales, the defendant corporation could be brought into any location where the end customer was located, even if only one product was sold in that state. Based on a new Federal Circuit decision (In re Cray Inc.), that is no longer true.

  • U.S. Supreme Court Seriously Limits Forum Shopping for Patent Litigation in Unanimous Decision
    May 30, 2017

    For close to 30 years, patent owners have been able to strategically select the best location for a patent litigation, assuming that the defendant sold the contested product in that location. Popular courts include the Eastern District of Texas and the Eastern District of Virginia. But not anymore... Last week, in a unanimous decision, the U.S. Supreme Court narrowed the possible venues for bringing patent infringement suits, holding that a defendant can be sued only as a "resident" of its state of incorporation, not in any state where it sells products. TC Heartland LLC v. Kraft Foods.

  • Mark Rosenberg Publishes Article in Luxury Daily on Right of Publicity Issues
    May 23, 2017

    An article on right of publicity issues by Intellectual Property partner and Reputation Management co-chair Mark Rosenberg was featured in the Luxury Daily. The article delves into the implications of a California woman’s $2.2 billion lawsuit against restaurant chain Chipotle, which used her photograph in its promotional materials without her consent.

  • Quantity - Not Quality - Counts for Patent Infringement: More Than One Component of an Invention Must be Supplied for Patent Infringement
    March 24, 2017

    The U.S. Supreme Court recently held in a recent decision in Life Technologies Corp v. Promega Corp. that the "supply of a single component of a multicomponent invention for manufacture abroad does not give rise to § 271(f)(1) liability."

  • Preserving the DMCA Safe Harbor - Why You Should Register Your DMCA Agent Now
    March 21, 2017

    The Digital Millennium Copyright Act (DMCA) established a safe harbor for online service providers (OSPs) which benefits any website that contains content from third parties.

  • What You Need to Know About "Unofficial" Solicitations of Advertisements, Registration and Customs Recordals
    March 16, 2017

    An increasing number of our clients have received letters from companies that appear to be government agencies with names such as "U.S. Trademark Registry," "U.S. Trademark Registration Office" and "Registration & Monitoring Division."

  • Federal Circuit Rules Software Patent for a User Interface is Patentable Subject Matter
    February 23, 2017

    In the recent decision Trading Technologies International, Inc., v. CQG, Inc. et al., the Federal Circuit affirmed a district court's ruling that a software patent on a graphical user interface was patentable subject matter, and not directed to an abstract idea under Alice.

  • Implications of the FDA's Recent Guidance on the Biologics Price Competition and Innovation Act
    January 30, 2017

    In December 2016, the FDA published an industry guidance related to the Biologics Price Competition and Innovation Act. This guidance offers suggestions to sponsors on the design and use of clinical pharmacology studies to support a claim of biosimilarity to a reference product.

  • Using a Person's Image for Commercial Purposes: Lessons Learned from the Chipotle $2.2 Billion Lawsuit
    January 25, 2017

    This month, a California woman sued Chipotle for $2.2 billion based on the burrito chain's unauthorized use of her photograph in its promotional materials.

  • Protecting Against Big Pharma's Tactics for Delaying Market Entry of Generics
    December 21, 2016

    Branded companies make millions of dollars each day that a generic version of a drug is held from the market.

  • Why Chinese Companies Need to Exercise Caution When Attending Trade Shows in the United States
    December 20, 2016

    Over the past two years, owners of U.S. patents have used Chinese companies' appearances at a trade show as a patent infringement "trap."

  • Brexit and IP Rights
    August 17, 2016

    On June 23rd, the UK voted to leave the European Union (Brexit).

  • New Challenge for Restaurant Owners: Obtaining Federal Trademark Registration for a Single Location
    February 22, 2016

    An interesting decision was recently issued by the Trademark Trial and Appeal Board rejecting a trademark application for pizza in connection with a single location restaurant.

  • Legal Alert: .SUCKS is Here: Can Your Brand Be Protected?
    April 29, 2015

    With the goal of fostering public commentary, the new domain name .SUCKS was approved by ICANN. Despite objections from some in the IP community, the sunrise period for .SUCKS is now open; it runs until May 29th.

  • Legal Alert: A New System For International Design Protection
    April 29, 2015

    Design patents continue to grow in importance for many industries. If your company designs tangible products or packages, there is a new, efficient way to seek international protection for design features.

  • Legal Alert: Alice Corp. v. CLS Bank's Effect on Business Method Patents
    March 26, 2015

    The patent landscape has changed regarding business method patents.In the summer of 2014, the Supreme Court issued a decision in Alice Corp. v. CLS Bank which invalidated certain business method patents related to finance. The basis for the invalidation was that the patents covered an abstract idea not eligible for patent protection.

  • Beware of the Boilerplate Series: "Defend, Indemnify and Hold Harmless"
    March 13, 2015

    Many agreements include an indemnification clause typically using language like this: “Party A will defend, indemnify and hold harmless all claims, losses and damages against Party B related to its use of the Technology.”

  • Beware of the Boilerplate Series: Defining Confidential Information
    October 16, 2014

    In Non-Disclosure Agreements, there is often boilerplate language that includes trade secrets in the definition of “Confidential Information.” This seemingly innocuous language can lead to problems for the owner of the trade secrets.

  • Beware of the Boilerplate Series: Limitation of Liability
    July 29, 2014

    Be wary of giving up your rights for "lost profits." In most jurisdictions, there are two types of "lost profits": (1) those arising from general damages (recovery of money that a party agreed to pay under a contract); and (2) those arising from consequential damages (recovery of money lost based on other business arrangements). The first is generally easier to prove, but often a party in breach can be reasonably expected to pay the second.

  • Beware the Boilerplate Series: Always Define the Meaning of "Intellectual Property"
    March 28, 2014

    Clearly define the grant provisions of all of your IP contracts. If you want to transfer or receive "intellectual property" or "technology," ensure that these terms are well defined and unambiguous. Definitions matter! By making the contract terms clear, you can potentially reduce (or eliminate entirely) future litigation costs.


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