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.
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.
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.
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,
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.
|Braginsky, Philip Partner and Co-Chair of Intellectual Property Group and Pharmaceutical and Biologics Practice and China Practice||Partner and Co-Chair of Intellectual Property Group and Pharmaceutical and Biologics Practice and China Practice||212.216.8065|
|Campbell, Amie Trademark Paralegal||Trademark Paralegal||212.216.1137|
|Formicola, Susan Paralegal||Paralegal||212.216.1149|
|Goldsmith, Amy B. Partner and Co-Chair of Intellectual Property Group||Partner and Co-Chair of Intellectual Property Group||212.216.1135|
|Lin, Rachel J. Counsel||Counsel||212.216.1152|
|Linn, Janet B. Counsel||Counsel||212.216.8067|
|Lippert, Nels T. Partner||Partner||212.216.1157|
|Rigato, Federica Associate||Associate||212.216.1194|
|Rosenberg, Mark J. Partner and Co-Chair of Reputation Management Practice||Partner and Co-Chair of Reputation Management Practice||212.216.1127|
|Rosner, Joel H. Counsel||Counsel||212.216.1187|
|Shravah, Aasheesh Counsel||Counsel||212.216.1132|
|Xia, Jing Partner and Co-Chair of Pharmaceutical and Biologics Practice and China Practice||Partner and Co-Chair of Pharmaceutical and Biologics Practice and China Practice||212.216.1158|
AXIUS, created by former USA Rugby player Brian Doyle, is a complete functional gym in one tool. While rehabbing a near career-ending knee injury, Brian became frustrated with the numerous fitness tools needed to accomplish his balance-based workouts. This initial frustration turned to inspiration, leading to Brian inventing AXIUS, a single fitness tool combining the principles of foundational strength with performance training.
EcoHealth Alliance is a global environmental health nonprofit based in New York City dedicated to protecting wildlife and public health from the emergence of pandemic diseases. Its unique "One Health” approach uses a multidisciplinary method to solve health challenges caused by environmental changes and human-animal interactions. Members of our team have served as EcoHealth Alliance's pro bono counsel for the past four years and continues to assist the nonprofit on an array of matters. Our full-service practice enables us to offer EcoHealth Alliance the ability to tap into the expertise of our lawyers on a wide range of legal matters when they need it, from trademark filing and intellectual property issues, to other complex business matters.
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 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 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.
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.
Intellectual Property Partner Mark Rosenberg joins host and Litigation Partner Rich Schoenstein to discuss the “Legal Perils of Video Marketing” on the latest episode of Law Brief. Mark and Rich delve into the legal implications of the popular use of video marketing for commercial purposes online and on social media. Listen to the episode.
Tarter Krinsky & Drogin was featured in the Law360 article, "Clothier Owes Atty Fees For 'Stunning' Negligence In TM Case." Tarter Krinsky & Drogin client Hybrid Promotions LLC prevailed on a sanctions motion based on the discovery misconduct of its adversary and its adversary's counsel.
Congratulations to Intellectual Property Co-chair Amy Goldsmith, who was appointed to Lawline’s Content Advisory Board for 2021 – 2022 for the first time, as a representative of Intellectual Property. As an inaugural board member, Amy’s responsibilities include participating in an assessment of Lawline’s course offerings within the Intellectual Property area and recommending subsequent courses and speakers to best grow the platform’s content.
Intellectual Property Co-chair Amy Goldsmith and special guest Brian Califano join Litigation Partner and host Rich Schoenstein to chat about “The Requirements of the SHIELD Act and Other Recommendations for Virtual Business Operations.” They delve into the implications of the recently adopted SHIELD Act in New York and other considerations for the online security of businesses and workers who are operating remotely.
We are pleased to announce that Intellectual Property Co-Chair and Partner Amy Goldsmith was named to Lawline’s Top Women Faculty of 2019, which recognizes the most-watched and highest-rated CLE programs Lawline produced by female faculty in 2019. Amy’s most popular presentation was “Website Terms and Conditions: One Size Does Not Fit All Territories (Update),” which was noted as providing viewers with “Extremely helpful, hands-on information.”
Intellectual Property Partner Mark Rosenberg was featured on the podcast, “Kommerce Kings,” which explores the e-commerce industry. The episode delves into the patent and trademark problems many online sellers face. With his significant experience of successfully representing online sellers, Mark shares how to navigate trademark and patent litigation. He outlines the steps to take when deciding to sell a new product online.
Intellectual Property Counsel Rachel Lin joined Litigation partner and host Rich Schoenstein to discuss Patenting Natural Ingredients on the latest episode of Law Brief. Rachel and Rich talk about the circumstances under which a patent might be obtained for products containing or based on natural ingredients. Listen to the episode.
Intellectual Property Counsel Janet Linn was quoted in the Bloomberg Law article, “Virus Delays Stir Deadline Concerns in Generic Drug Patent Cases.”
Mark Rosenberg, Intellectual Property partner and co-chair of the firm’s Reputation Management practice, was quoted in the Bloomberg Law article, “Amazon’s Judging of IP Claims Questioned in Seller Lawsuits.”
Intellectual Property co-chair Amy Goldsmith joined Litigation partner and host Rich Schoenstein to discuss trade secrets and disclosing confidential information during a two-episode discussion on Law Brief, Tarter Krinsky & Drogin’s new podcast series.
In the first of the two-part discussion, The Secrets of Trade Secrets, Amy and Rich talk about identifying and protecting trade secrets and confidential information. This part is focused on statutorily protected trade secrets – what they are and how to keep them private.
The second episode of the discussion, Confidential Information Disclosed, delves into defining and protecting trade secrets and confidential information, with an emphasis in this part on the latter, broader category, and what steps a company must take to protect its confidential information.
In the latest episode of Law Brief, Tarter Krinsky & Drogin’s recently released podcast series, Intellectual Property partner Mark Rosenberg joins Litigation partner and host Rich Schoenstein to discuss Amazon’s Pilot Program for Patent Disputes. Mark and Rich talk about Amazon’s new pilot program to arbitrate patent disputes involving sellers on its platform, and the potential impact on the sellers, the patent owners and Amazon itself.
Tarter Krinsky & Drogin is pleased to announce the launch of a podcast that will cover cutting-edge and ever-changing legal issues and how they affect our businesses in a practical way. The podcast, called “Law Brief,” is hosted by Litigation partner Rich Schoenstein, and features other Tarter Krinsky & Drogin lawyers who will highlight current issues in their practice areas.
Law Brief provides short discussions of current legal issues of interest, designed for non-experts on the go. The conversations are informal but informative, short but deep, and intended to expose all sides of the issues.
Mark Rosenberg, Intellectual Property partner and co-chair of the firm’s Reputation Management practice, was featured in the Forbes article, “Amazon’s New ‘Utility Patent Neutral Evaluation’ Process Stops Bogus IP Claims.”
The article noted that Mark has represented several parties in Amazon’s new Utility Patent Neutral Evaluation program, which seeks to resolve the issue whereby a utility patent owner and accused seller on Amazon can have their case investigated by a neutral third-party evaluator with expertise in law and utility patents. Mark noted that “not only is the current litigation option expensive, there is a high likelihood that the patent owner will file a counterclaim for infringement and damages based on the sales of the accused product.”
Mark Rosenberg, Intellectual Property partner and co-chair of the firm’s Reputation Management practice, was quoted in Law360’s article, “Judge Sanctions Atty For Disrupting Deposition In TM Case.” The article details U.S. Magistrate Judge Ona T. Wang’s decision awarding sanctions against The Fashion Exchange LLP and its attorney based on the attorney’s interference with the taking of the Rule 30(b)(6) deposition of The Fashion Exchange in a trademark infringement case that it brought. The court ordered that The Fashion Exchange and its attorney jointly and severally pay half the costs and fees that Tarter Krinsky & Drogin client Hybrid Promotions LLC incurred in connection with taking the Rule 30(b)(6) deposition and the motion for sanctions.
Thirty-two lawyers from Tarter Krinsky & Drogin have been named to the 2019 New York Super Lawyers and Rising Stars lists, a rise in Tarter Krinsky & Drogin attorneys awarded as top lawyers in New York. The annual Super Lawyers list recognizes the top five percent of lawyers in New York for their professional achievements. Lawyers are selected through a process that includes independent research, peer nominations and peer evaluations.
Intellectual Property co-chair Amy Goldsmith was quoted in the Creative Business Inc. article, "Does Your Company Take Confidentiality and Trade Secrets Seriously?” The article discusses the importance of implementing protections for confidential information or trade secrets for all companies, no matter the size or industry.
Intellectual Property co-chair Amy Goldsmith is quoted in the Forbes article, “Counterfeits - Amazon, Etsy, eBay, Instagram and Others Duping Consumers and Damaging Innovation.” The article discusses counterfeits and knockoffs in the online e-commerce marketplace and how setting up online storefronts on Amazon, Etsy, eBay and Instagram, among others, gives counterfeiters access to millions of consumers. In turn, legitimate product vendors are finding it difficult to protect their IP rights and police against potential infringements by millions of online storefronts.
Intellectual Property partner Mark Rosenberg was quoted in Law360’s article, “Want To Avoid Costly Patent Cases? Amazon Offers A Hack,” which discusses Amazon’s new program that allows patent owners and Amazon sellers to settle patent infringement disputes in a streamlined proceeding.
Intellectual Property co-chair Amy Goldsmith was featured on Fox 5 New York discussing Australia’s new social media law, which now makes it a crime if social media platforms do not expeditiously remove violent content and can lead to major fines and jail time for media executives.
Intellectual Property co-chair Amy Goldsmith was recently named to Law360’s 2019 Intellectual Property Editorial Advisory Board, which is responsible for obtaining feedback on Law360’s coverage and gaining insight from leaders in the field on how to best shape future coverage.
Tarter Krinsky & Drogin is pleased to announce that three of its lawyers, Intellectual Property co-chair Amy Goldsmith, Immigration partner Roxanne Levine and Construction partner Laurie Stanziale, have been named to Law360’s 2019 Editorial Advisory Boards where they will help in planning Law360’s future coverage in their individual fields.
Intellectual Property co-chair Amy Goldsmith was quoted in Pacer Monitor’s article, “Nicki Minaj Copyright Suit Asks Federal Court to Weigh Inspiration vs Infringement.” The article discusses the recent lawsuit between singer-songwriters Tracy Chapman and Nicki Minaj wherein Chapman alleges Minaj employed the lyrics from her 1988 single “Baby Can I Hold You” after Minaj’s licensing request was denied. At the core of the litigation is whether being inspired by Chapman’s art is an actual infringement on the part of Minaj.
Thirty lawyers from Tarter Krinsky & Drogin have been named to the 2018 New York Super Lawyers and Rising Stars lists as top lawyers in New York. The annual Super Lawyers list recognizes the top five percent of lawyers in New York for their professional achievements. Lawyers are selected through a process that includes independent research, peer nominations
In a Bankrate article on investing resources for women in honor of Women’s Equality Day on August 26 noting that many women are still being paid less than men, Savvy Ladies, a nonprofit organization that provides personal finance education and resources for women to inspire them to plan for the future, was noted as having helped more than 15,000 women with financial resources. IP co-chair Amy Goldsmith currently serves on the board of Savvy Ladies and is the longest-serving member of the nonprofit’s board.
Intellectual Property co-chair Amy Goldsmith and Intellectual Property partner Alan Tenenbaum were lauded by Lawline during Teacher Appreciation Week 2018 for their recent webinar, “Anatomy of Discovery in Patent Litigation.” In their presentation, Amy and Alan addressed contention interrogatories, discovery in Markman hearings, handling e-discovery and selecting experts. They also discussed how to guide clients through the discovery phase of a patent litigation.
Tarter Krinsky & Drogin, a leading mid-size, full-service law firm, announced today that Janet B. Linn has joined the firm as a counsel in its Intellectual Property practice. Her arrival bolsters the firm’s core strengths in IP and Hatch-Waxman patent litigation.
Intellectual Property co-chair Amy Goldsmith was quoted in The Atlantic’s article, “Amazon May Have a Counterfeit Problem.” In the article, Amy discussed whether e-commerce sites are responsible for potentially counterfeit goods being sold on the web. She said, “Essentially, the law says that internet service providers are highways that goods travel over. They are not responsible for what’s in the trucks that go over these roads, as long as they apply a ‘rigorous’ takedown procedure to complaints about counterfeit goods.”
We have been celebrating the brilliant women of Tarter Krinsky & Drogin all Women’s History Month long. They are integral to the success of our firm, clients and community. In this installment, learn more about Intellectual Property Counsel Rachel Lin.
In honor of Women’s History Month, we recognize the exceptional women of Tarter Krinsky & Drogin. They bring tremendous value to our firm, our clients, our profession and our community. Learn more about Intellectual Property co-chair Amy Goldsmith.
GlobeSt.com noted the recent lawyer promotions of Brian Beller and Scott Schneider to partner in the Real Estate practice; Jing Xia to partner in the Intellectual Property practice; and John Rondello to counsel in the Construction practice. GlobeSt.com is an online commercial real estate content platform.
Real Estate Weekly highlighted Tarter Krinsky & Drogin’s recent lawyer promotions, noting that Brian Beller and Scott Schneider were promoted to partner in the Real Estate practice; Jing Xia became a partner in the Intellectual Property practice; and John Rondello was promoted to counsel in the Construction practice.
The New York Law Journal’s On the Move column noted the recent promotions of Tarter Krinsky & Drogin lawyers Brian Beller and Scott Schneider, who were promoted to partner in the Real Estate practice; Jing Xia, who became a partner in the Intellectual Property practice; and John Rondello was promoted to counsel in the Construction practice.
Bloomberg's Big Law Business highlighted Tarter Krinsky & Drogin’s recent lawyer promotions in its Wake Up Call column.
Tarter Krinsky & Drogin is pleased to announce the promotions of four lawyers, three to partner and one to counsel. The firm's new partners are Brian Beller (Real Estate), Scott Schneider (Real Estate) and Dr. Jing Xia (Intellectual Property). John Rondello (Construction) was promoted to counsel.
Intellectual Property counsel Nels Lippert has been reappointed for a two-year term on the International Trade Association’s Trademark Reporter Committee.
This year, 28 lawyers from Tarter Krinsky & Drogin have been named to the 2017 New York Super Lawyers and Rising Stars lists as top lawyers in the state. The annual Super Lawyers list recognizes the top five percent of lawyers in New York for their professional achievements. Attorneys are selected through a process that includes independent research, peer nominations and peer evaluations.
Four Tarter Krinsky & Drogin attorneys were ranked on the Rising Stars list, which recognizes the top 2.5 percent of lawyers who either are under the age of 40 or have been in practice for 10 years or less.
Learn more about Intellectual Property partner and co-chair Amy Goldsmith as part of our series to recognize the outstanding women at Tarter Krinsky & Drogin in honor of Women's History Month
Laurie Stanziale and Amy Goldsmith authored “Classic or chaotic, copyrighting architectural works is an art form” for Real Estate Weekly.
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.
Amy Goldsmith, Co-chair of the Intellectual Property Practice, was featured in the American Bar Association’s book "Marketing Success: How Did She Do That?"
Following her May 12, 2015 presentation on rights of publicity, Amy Goldsmith, Co-chair of the Intellectual Property Practice, posted a blog entry on Lawline Today.
The firm represented The Reader’s Guild LLC in securing a long-term, exclusive licensing agreement with Reader’s Digest.
Our client, designer Tim Coppens is one of 15 designers chosen for the year-long Swarovski Collective created to mark the program’s 15th anniversary. This group of exceptional designers will partner with Swarovski for their Spring/Summer 2015 and Autumn/Winter 2015 collections.
Tarter Krinsky & Drogin LLP is pleased to welcome Dr. Jing Xia as a Counsel in the Intellectual Property Group. For over ten years, she has concentrated her practice on the representation and counselling of mid to large size generic pharmaceutical clients, especially litigations arising under the Drug Price Competition and Patent Term Restoration Act (Hatch Waxman).
Tarter Krinsky & Drogin LLP is pleased to welcome Nels T. Lippert as a Counsel in the Intellectual Property Group. With a focus on trademark and patent counseling and litigation, he administers trademarks and registrations globally for leading consumer product manufacturers, pharmaceutical companies and service companies.
Tarter Krinsky & Drogin successfully defended I love Sugar, a locally owned high-end candy retailer based in Myrtle Beach, South Carolina in a trade dress infringement case brought by their competitor It’Sugar.
Tarter Krinsky & Drogin represented Hackermeter, a coding challenge website, in the negotiation and closing of an acquisition with Pinterest. The start-up was launched at Y Combinator’s Demo Day in August and matched developers with companies through code challenges.
Tarter Krinsky & Drogin represented Veeco Instruments Inc., a global leader in Process Equipment technology, on IP diligence work in the acquisition of Synos Technology, Inc. Synos designs and manufactures the equipment used in making flexible OLED displays for mobile devices.
We are representing Fitbug in suit against health gadget maker Fitbit, alleging trademark infringement, as well as unfair competition and unfair business practices, arguing that Fitbit's name is confusingly similar to Fitbug.
Tarter Krinsky & Drogin LLP is pleased to welcome Rachel J. Lin as a Counsel in the Intellectual Property Practice.
Tarter Krinsky & Drogin LLP is pleased to announce that Douglas J. Gilbert has joined the firm as a Partner in the firm’s newly formed Intellectual Property Practice Group.
In early 2019, Amazon introduced the Neutral Patent Evaluation Procedure, a streamlined and cost-effective program for resolving disputes between owners of utility patents and Amazon Marketplace sellers accused of infringing those patents. Having represented Amazon Marketplace sellers and a patent owner in Neutral Patent Evaluations, I am convinced that the program works. Utility Patent disputes adjudicated through the Neutral Patent Evaluation Procedure are resolved in far less time than it takes for a patent infringement case to wend its way through a federal district court and at a fraction of the cost. The evaluators are attorneys with relevant technical or patent litigation experience. In my experience, they have not exhibited bias for or against patent owners or Amazon Marketplace sellers, or against Marketplace sellers based overseas such as in China.
Although a seemingly infrequent issue, the ability to sue domestic and foreign sovereign entities in intellectual property disputes has been the subject of recent seminal U.S. Supreme Court and Appellate Court decisions. In these decisions, the Courts addressed statutes that seek to abrogate sovereign immunity to allow suits by private individuals against foreign and domestic states in intellectual property actions. While the Supreme Court has now made it clear that a state cannot be sued for copyright (or patent) infringement, the Second Circuit held that a foreign entity may be sued in U.S. courts under certain circumstances.
The COVID-19 pandemic has had an enormous and likely long-term impact on research into infectious diseases, ushering in a flurry of investigation into possible treatments and vaccines. The pandemic is also influencing how those in the wider healthcare system will bring relevant diagnostics and therapies to the market and ultimately to those in need.Many of the future underlying innovations in diagnostics, treatments, vaccines, and other related healthcare services for COVID-19 will come from a university, research institution or other recipient of federal research funding. The desperate healthcare, social and political needs for these innovations may dramatically influence how future research and medical innovations enter the market and ultimately reach patients in need. As such, COVID-19 could substantially affect how both the United States and the world deal with similar crises in the future.
In a striking decision issued on July 15, 2020, the U.S. Court of Appeals for the Second Circuit held that motions to dismiss based on state Anti-SLAPP statutes, which require that plaintiffs satisfy a high standard of proof in certain types of defamation cases, cannot be made in federal court because such motions conflict with Rules 12 and 56 of the Federal Rules of Civil Procedure.
When you upload content on Instagram, you can choose to make your post "public" or "private." According to Instagram, not only is the public content accessible and searchable by Instagram's users, the content is also subject to use by them on their websites via Instagram's application programming interface or "API."
Now more than ever before, almost everyone is online, both personally and for business purposes. There is a lot of confusion about posting pictures and images on social media - Instagram, Facebook, Pinterest and other platforms. What is legally permitted and what isn't?
On May 8, 2020, the United States Patent and Trademark Office (USPTO) announced a new program for expediting certain COVID-19 related patent applications. Under the COVID-19 Prioritized Examination Pilot Program, the USPTO will grant requests for prioritized examination to small or micro entity status applicants without requiring payment of the typical prioritized examination fees. Also under this program, the USPTO will endeavor to reach final disposition of applications within six months if applicants are responsive.
The U.S. Food and Drug Administration (FDA) recently published a new guidance (the Guidance) related to medical device shortages or potential shortages during the COVID-19 pandemic The Guidance is meant to implement Section 506J of the Federal Food, Drug, and Cosmetic Act (FD&C Act) (21 U.S.C. 351 et seq.), which was added under Section 3121 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).
Prosecuting and maintaining a patent portfolio costs many organizations millions of dollars. These costs should be continuously managed and controlled. However, many organizations allow these tasks to slip when times are good. Under the current circumstances, it is worth revisiting some ideas that go beyond the basics of implementing and practicing a good patent management system.
In a follow up to our alert issued on April 2, 2020, in accordance with The Coronavirus Aid, Relief and Economic Security Act (CARES Act), on April 28, 2020, United States Patent and Trademark Office (USPTO) Director Andrei Iancu issued public notices regarding the further extension of certain patent and trademark deadlines to June 1, 2020.
On April 23, 2020, the U.S. Supreme Court issued its long-awaited decision on whether "willful" infringement was a prerequisite to an award of the infringer's profits as damages. In Romag Fasteners, Inc. v. Fossil Group, Inc., Case No. 18-1233, the Court held that a "plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff's trademark as a precondition to a profits award" and, thus, brought to an end the division of the courts of appeals on this topic.
Under what circumstances can a building owner legally remove artwork from a building? In 2018, a group of graffiti artists was awarded $6.75 million dollars for the improper removal of their art. On February 20, 2020, the United States Court of Appeals for the Second Circuit upheld that lower court's ruling. In Castillo vs. Cohen et al, 950 F.3d 155 (2d Cir. 2020), known as the 5Pointz case, the appellate court issued a decision that provides needed guidance to building owners and graffiti artists alike.
In our recent Immigration Alerts, we discussed United States Citizenship and Immigration Services (USCIS) closures and updates regarding labor condition posting notices in the context of nonimmigrant visa applications in light of the "new world" of telecommuting during the COVID-19 era. We also recently discussed travel restrictions to and from the United States. This alert includes further updates that are worthwhile to relay to our readers at this time.
The COVID-19 pandemic has had an impact on patent and trademark offices and operations globally. Below is a summary of changes seen over the past few weeks.
On March 31, 2020, in accordance with The Coronavirus Aid, Relief and Economic Security Act (CARES Act), United States Patent and Trademark Office (USPTO) Director Andrei Iancu issued a public notice regarding the extension of certain patent and trademark deadlines.
In the past calendar year, we saw several significant decisions from the Supreme Court pertaining to trademarks.
In this Alert, we reported on the new email address rule. The U.S. Patent and Trademark Office (USPTO), based on objections from trademark attorneys throughout the U.S., has now modified the new email address rule to permit appointed attorneys to both establish and monitor the new email address for trademark applicants and registrants.
As of February 15, 2020, all new trademark applications and post-registration filings (such as proof of use and renewals) must include an email address of the applicant(s) in addition to the name, email address, and postal address of an attorney who is an active member in good standing of the bar of the highest court of a state in the United States.
In 2019, both the Supreme Court and the Court of Appeals for the Federal Circuit issued decisions that will significantly affect patent law practice.
It is very likely the U.S. President will soon sign the newly amended United States-Mexico-Canada Agreement (USMCA), which is intended to replace NAFTA. Mexico has already ratified the amended USMCA and Canada is expected to ratify soon. This trade agreement has important implications for intellectual property rights and the recent amendments will especially have an impact on the biopharma industries.
As we start a new year, we would like to share with you some of our most popular legal alerts from 2019. Our top-read alerts range from construction, labor & employment, tax, immigration, trusts & estates, cooperatives & condominiums, real estate, corporate & securities, litigation and intellectual property, reflecting the broad array of our full-service practice. We hope that our alerts have been valuable to you and your colleagues, and demonstrate our commitment to providing helpful information to you.
In 2019, New York's state legislature did not pass the NYPA: the New York Privacy Act. For the moment, there is no state law governing privacy, although the NYPA may be part of the 2020 legislative agenda. However, the SHIELD Act (Stop Hacks and Improve Electronic Data Security Act) was signed into law by the Governor. SHIELD modified New York's data breach notification law and the state technology law (N.Y. General Business Law (GBL) §899-aa and N.Y. State Technology Law (STT) §208). The STT governs the obligations of state agencies if there is a data breach; the GBL relates to everyone else. SHIELD also imposes new data security obligations. SHIELD is effective as of March 21, 2020.
The U.S. Food and Drug Administration (FDA) announced plans to withdraw the approval of 249 Abbreviated New Drug Applications (ANDAs), since their manufacturers have failed to submit annual reports. This should serve as a wakeup call to all delinquent ANDA holders.
On January 1, 2020, the most restrictive data privacy act in the United States, the California Consumer Privacy Act (CCPA), went into effect. This law is not limited only to businesses that are established or have locations in California. To the contrary, the CCPA applies to any for-profit business “doing any business in California” which collects personal information from California residents and satisfies just one of these criteria: (a) has a gross revenue of greater than $25 million dollars, (b) annually buys, receives, sells or shares personal information of more than 50,000 consumers, households or devices for commercial purposes or (c) derives more than 50% of its annual revenues from selling consumers’ personal information.
Intellectual Property partner and co-chair of the Reputation Management practice Mark Rosenberg authored an article featured in Law360 titled, “Navigating Amazon Marketplace IP Disputes.” In the article, Mark focuses on Amazon’s evolved processes, procedures and issues for IP disputes arising from the Amazon Marketplace, including the Amazon Brand Registry and the Neutral Patent Evaluation Procedure.
Intellectual Property partner and co-chair of the Reputation Management practice Mark Rosenberg authored an article featured in Intellectual Property Magazine titled, “Amazon Assistance.” In the article, Mark discusses Amazon’s neutral patent evaluation program, which creates an alternative to federal court proceedings in patent infringement disputes on its website.
Intellectual Property Group co-chair Philip Braginsky authored an article featured in Medical Device and Diagnostic Industry (MD+DI) titled, “Patent Considerations for Connected Medical Devices.” In the article, Phil discusses why developing new solutions, the Internet of Things (IoT) and Blockchain must be important components of a medtech company’s strategic planning.
Canada and Brazil have signed on to the Madrid Protocol, which established "one-stop shopping" for filing an international trademark application. The Protocol came into effect in Canada on June 17, 2019 and will come into effect in Brazil on October 2, 2019, bringing the total of Protocol nations to 121.
On July 2, 2019, the United States Patent and Trademark Office (USPTO) announced a new rule that all trademark applicants and registrants whose domicile or principal place of business is not located within the United States must be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States. This rule becomes effective on August 3, 2019.
The Food and Drug Administration (FDA) recently enhanced its Paragraph IV (PIV) Certifications List with additional data fields. The PIV Certification List regularly publishes information regarding the 180-day exclusivity provided under 505(j) of the Federal Food, Drug, and Cosmetic Act (FD&C Act). Historically, the information has included the name of the drug product, dosage form, strengths, RLD/NDA numbers and the date of first filing. The new data fields added by FDA will further help generic drug companies plan product development more strategically and are intended to increase approvals of more generic drugs.
The road to permitting the registration of George Carlin's seven dirty words began in 2017, with the Supreme Court holding unconstitutional the Trademark Act's prohibition against registration of trademarks which are disparaging. That decision permitted the registration of the mark "THE SLANTS" for entertainment in the nature of live performances by a musical band.
As we head into summer, we would like to share with you some of our most popular legal alerts from the first half of 2019. Our top-read alerts range from construction, labor and employment, tax, corporate and securities, immigration, cooperatives and condominiums, commercial leasing, real estate, litigation and intellectual property, reflecting the broad array of our full-service practice. We hope that our alerts have been valuable to you and your colleagues, and demonstrate our commitment to providing helpful information to you.
Intellectual Property counsel Janet Linn’s recent LexisNexis Lexis Practice Advisor article is published in Law360 titled, “Hatch-Waxman Pre-Suit Considerations For Generics: Part 1.” In the first of the two-part article, Janet addresses how counsel for a generic drug company should prepare for patent litigation under the Drug Price Competition and Patent Term Restoration Act of 1984, better known as the Hatch-Waxman Act.
Often, an Amazon seller accused of patent infringement finds itself in a frustrating predicament. The seller receives an email from Amazon notifying it that the seller’s product is being removed from the site and stating that if the seller believes that the infringement allegation is incorrect, the seller should directly contact the patent owner. Not surprisingly, the seller’s or its attorney’s good faith explanation as to why there is no infringement often falls on deaf ears. And, the seller’s appeals to Amazon for assistance in rectifying the situation are usually fruitless. Earlier this year, Amazon introduced a pilot program that may remedy this situation in a way that benefits both patent owners and Amazon sellers.
On May 20, 2019, the U.S. Supreme Court issued a long-awaited and important decision in Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. __ (2019) (the Supreme Court decision), resolving a split amongst various Circuit courts concerning the impact of rejection of trademark licenses by debtor-licensors in a bankruptcy case.
Intellectual Property counsel Janet Linn authored an article featured in LexisNexis’s Lexis Practice Advisor titled, “Hatch-Waxman Pre-suit Considerations from the Generic Perspective.” In the article, Janet discusses how counsel for generic drug companies should prepare for patent litigation under the Drug Price Competition and Patent Term Restoration Act of 1984, better known as the Hatch-Waxman Act.
In an important decision for the personal care and ingredients industries, the U.S. Court of Appeals for the Federal Circuit recently vacated a district court decision that held patent claims invalid as being directed to non-patent eligible subject matter in Natural Alternatives Int'l v. Creative Compounds, LLC (Case No. 18-295).
As an addition to our ongoing series designed to help board members properly discharge their fiduciary duties in relation to company intellectual property, our next topic is the board’s obligations relating to executive qualification and officer oversight. It has become well established that in the United States, intellectual property and other forms of intangible assets make up a greater portion, than was the case a few years ago, of a business enterprise’s balance sheet. We do not anticipate this trend ending any time soon and as such, the need for intellectual property proficiency must be a priority for all governing bodies.
There are three types of Premarket Notification 510(k)s that may be submitted to the U.S. Food & Drug Administration (FDA): Under the recently finalized Safety and Performance Based Pathway guidance, FDA has expanded the Abbreviated 510(k) route for certain well understood device types. The FDA expects to begin implementation of this pathway as soon as the device types and performance criteria are identified. Once implemented, a medical device manufacturer will be able to use performance criteria instead of direct comparisons to show substantial equivalence for qualifying devices.
The news cycle is filled with the raucous activity of the UK Parliament with regard to Brexit, the "exit" of the UK from the European Union. On March 29, even Theresa May's offer to resign did not persuade Parliament to approve of the Withdrawal Agreement. As of yesterday, Brexit Day has moved to October 31, 2019, but the EU's extension obligates the UK to vote in parliamentary elections in May (or Brexit Day will be June 1). The EU will convene a summit in June to review the UK's progress towards Brexit.
Are you and your family first in line at your hometown stadium on Opening Day? Do you regularly visit museums and attractions? Have you seen your face on the big screen or posted your own pictures on social media? Most likely, your answer is “Of course!” But have you read the fine print that governs what the venue is permitted to do with your name, likeness, image, voice and uploaded photos? Visitors to the new Hudson Yards attraction in NYC, named the “Vessel,” which opened on March 15, were taken by surprise at the scope of the rights that they gave away by buying tickets and visiting the building.
Yesterday, the U.S. Supreme Court unanimously decided that a copyright registration is required in order to sue for copyright infringement. The various appellate courts had been split: some had permitted copyright owners to sue even before an application had been granted, while others required the registration prior to suit. The issue arose due to this language in Section 411(c) of the Copyright Act: "no civil action for infringement of the copyright in any United States work shall be instituted until ... registration of the copyright claim has been made in accordance with this title." (emphasis added) The next sentences of Section 411(c) allow a plaintiff to sue even if the Copyright Office has rejected the application - but only if the plaintiff notifies the Copyright Office of the lawsuit.
Intellectual Property co-chair Amy Goldsmith authored an article featured in Law360 titled, “Copyright Protection For Jewelry Seems Tangled.” In the article, Amy discusses registering copyrights for jewelry, which has become increasingly difficult based on recent trends in the U.S. Copyright Office.
This past December, the U.S. Food and Drug Administration (FDA) issued a biosimilar industry guidance on a variety of topics. Mostly overlooked was a Q&A regarding safety protections in a 351(k) application. The FDA Commissioner thought the matter was important enough to single out in his comments released the same day, calling it a "critical issue."
As we start a new year, we would like to share with you some of our most popular legal alerts from 2018. Our top-read alerts range from construction, corporate and securities, labor and employment, tax and intellectual property, reflecting the broad array of our full-service practice. We hope that our alerts have been valuable to you and your colleagues, and demonstrate our commitment to providing helpful information to you.
Intellectual Property co-chair Amy Goldsmith authored a Lawline blog post, “IPoems, Patent Law Edition.” The blog post contains poems written by Amy that are designed to break down complex terms of patent law to make them easier to digest. Amy states, “If a picture is worth a thousand words, an informative limerick might be worth an entire law review article.” She goes on to share her original poems on patent law and gives correlating explanations for each.
Intellectual Property co-chair Amy Goldsmith wrote an article that was featured in IP Watchdog on “Musically Inclined: The Music Modernization Act of 2018.” In the article, Amy explores the recent disputes between Flo & Eddie, the owner of pre-1972 musical recordings, and Sirius XM, which publicly performed those recordings, regarding whether common law or statutory copyrights existed and if so, what level of compensation was due.
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.
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.
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.
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."
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.
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.
Intellectual property can present operational risks - knowledge and protocols can help.
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.
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."
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.
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, 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."
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.
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.
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.
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?
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.
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.
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.
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.
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."
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.
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."
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.
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.
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.
Branded companies make millions of dollars each day that a generic version of a drug is held from the market.
Over the past two years, owners of U.S. patents have used Chinese companies' appearances at a trade show as a patent infringement "trap."
Intellectual Property partner Amy Goldsmith and Construction partner Laurie Stanziale wrote, “Whose Line, Drawing Or Plan Is It Anyway?" which was part 2 of a two-part article for Law360. The article addresses owner-architect agreements and instruments of service for the parties to set forth rights and obligations.
Intellectual Property partner Amy Goldsmith and Construction partner Laurie Stanziale wrote “Whose Line, Drawing Or Plan Is It Anyway?”, which is part 1 of a two-part article, for Law360.
On June 23rd, the UK voted to leave the European Union (Brexit).
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.
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.
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.
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.
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.”
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.
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.
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.