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Intellectual Property Counseling and Litigation

Intellectual Property Counseling and Litigation

A comprehensive practice guide to bothclient counseling and dispute resolution in all areas ofintellectual property law


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    Intellectual Property Counseling and Litigation is built to give the general practitioner a tool to in advising clients on various aspects of IP law. Each chapter of the treatise covers a specific area of IP law in a way that someone unfamiliar with that area can quickly get up to speed and advise clients. Each chapter is written by an expert in that area of IP law and not only provides a general overview of that area, but also gives insights that only come with years of practical experience. If you have only one IP book in your library, this is the one to have.

    It does not matter if you are a general counsel that needs to learn about trademark law or a copyright attorney who wants to understand the latest patent amendments. Intellectual Property Counseling and Litigation is a must-have for your library as it provides the latest analysis for all IP topics to help you make sense of what is new and exciting in this continuously changing area of law.

    This all-inclusive practice guide also offers both client counseling and dispute resolution. As of May 2013, the following units have been revised by these leading and practicing U.S. intellectual property attorneys:

  • Chapter 3 Protecting Designs by Trademarks, Copyrights, and Design Patents: Updated by Howard N. Aronson, Esq. a member of the New York Bar, and a founding partner of Lackenbach Siegel, LLP, Scarsdale, New York.
  • Chapter 25 Intellectual Property in Government Contracts: Updated by David S. Bloch of Winston & Strawn LLP, San Francisco, California, and James G. McEwen of Sikorsky Aircraft Corporation, Stratford, Connecticut.
  • Chapter 104 Review Proceedings before the Patent Trial and Appeal Board: Prepared by Lissi Mojica and Kevin Greenleaf of Schwegman, Lundberg, & Woessner, P.A.
  • Chapter 105 Practice Before the U.S. Court of Appeals for the Federal Circuit: Updated by Adam Conrad, senior associate at King & Spalding LLP in Charlotte, NC.

    Recent topics discussed include:

  • The developing law in areas such as counterfeit goods, computer chip and software protection, biotechnology, process patents and design protection
  • The relationship between intellectual property law and other business law: bankruptcy, antitrust, arbitration, government contracting, insurance and export control
  • International aspects of the law, including patent and trademark protection, overseas licensing concerns and foreign litigation problems
  • Litigation procedure and strategy for every type of case with step-by-step guidance through each phase of litigation, from complaint drafting to discovery to trial tactics and damages
  • Procedure before special intellectual property tribunals, including the U.S. Claims Court, the Trademark Trial and Appeals Board, and the Court of Appeals for the Federal Circuit

    First published in 1988.

    7 Volumes; Loose-leaf; updated with revisions.

    Also available on Authority Intellectual Property Law Library CD-ROM.


    • PART I INTRODUCTION

    PART II COUNSELING STRATEGIES FOR SUCCESSFUL PROTECTION OF INTELLECTUAL PROPERTY

    Subpart A Protecting the Subject Matter

    Chapter 1 Defensive Measures Against Counterfeiting

    Chapter 2 Drafting Patents with a View to Litigation*

    Chapter 3 Protecting Designs by Trademarks, Copyrights, and Design Patents

    Chapter 4 Drafting and Enforcing Noncompetition Clauses for Employees

    Chapter 5 Standards of Protectable Trade Secrets

    Chapter 6 False Comparative Advertising

    Chapter 7 Protecting Biotechnology

    Chapter 8 Biotechnology Deposit Requirements

    Chapter 9 The Chip Protection Act

    Chapter 10 Chip Protection: Litigation, Licensing and International Issues

    Chapter 11 Software Protection

    Chapter 12 Process Patents

    Chapter 13 Intellectual Property Protection of E-Commerce

    Subpart B Intellectual Property Strategies in Business Law Settings

    Chapters 14 - 19 Reserved

    Chapter 20 Arbitration and Arbitration Clauses

    Chapter 21 Technology Joint Ventures

    Chapter 22 Personal Liability of Officers and Directors for Corporate Infringement of Intellectual Property Rights*

    Chapter 23 Interface Between Intellectual Property Law and Antitrust Law

    Chapter 24 Bankruptcy and Intellectual Property Licensing

    Chapter 25 Intellectual Property in Government Contracts

    Chapter 26 Tax Planning for Intellectual Property

    Chapter 27 Export Control of Intellectual Property

    Chapter 28 Privacy, Publicity and Intellectual Property

    Chapter 29 Insurance Coverage for Intellectual Property Lawsuits

    Chapters 30 - 39 Reserved

    Subpart C Counseling in the Foreign Setting

    Chapter 40 Foreign Trademark Counseling and Strategy

    Chapter 41 Strategies for Foreign Patenting of U.S. Inventions

    Chapter 42 International Technology License Agreements

    Chapter 43 Foreign Patent Litigation

    Chapter 44 Reserved

    Subpart D The Role of Counsel

    Chapter 45 Containing Costs in Intellectual Property Litigation

    Chapter 46 Legal Opinions in Intellectual Property Matters

    Chapters 47 - 49 Reserved

    PART III LITIGATING THE INTELLECTUAL PROPERTY CASE

    Subpart A Evaluating and Resolving the Controversy Before Trial

    Chapter 50 Risk Evaluation in Intellectual Property Litigation

    Chapter 51 Settlement Techniques

    Chapter 52 Willfulness and Defense to Willfulness

    Chapter 53 Alternative Dispute Resolution

    Chapter 54 Reserved

    Subpart B Jurisdiction and Causes of Action

    Chapter 55 Jurisdiction and Venue Issues of Concern in Intellectual Property Litigation

    Chapter 56 Checklist of Patent Causes of Action and Defenses (With Sample Pleadings)

    Chapter 57 Checklist of Trademark and Unfair Competition Causes of Action and Defenses, Including Sample Pleadings

    Chapter 58 Checklist of Trade Secret Causes of Action and Defenses, Including Sample Pleadings

    Chapter 59 Checklists of Copyright Causes of Action and Defenses, Including Sample Pleadings

    Chapters 60 - 64 Reserved

    Subpart C Preliminary Relief

    Chapter 65 Survey of Preliminary Injunction Requirements

    Chapter 66 Federal Ex Parte Temporary Relief

    Chapters 67 - 69 Reserved

    Subpart D Discovery

    Chapter 70 Discovery in Patent Cases

    Chapter 71 Discovery in Trademark Cases in the Courts and Trademark Trial and Appeal Board

    Chapter 72 Discovery in Trade Secret Cases

    Chapters 73 - 74 Reserved

    Subpart E Privilege

    Chapter 75 Attorney-Client Privilege and Work-Product Immunity in Intellectual Property

    Chapters 76 - 79 Reserved

    Subpart F Trial Techniques

    Chapter 80 Selection and Preparation of a Patent Expert in a Patent Case

    Chapter 81 Surveys

    Chapter 82 Trial Techniques in Jury and Bench Trials of Patent Cases

    Chapter 83 Trial Techniques in Trademark Cases

    Chapter 84 Trial Techniques in Trade Secret Cases

    Chapter 85 Trial Techniques in Jury and Bench Trials of Copyright Cases

    Chapters 86 - 89 Reserved

    Subpart G Relief

    Chapter 90 Compensation in Patent Infringement Cases

    Chapter 91 Damages for Trademark Infringement

    Chapter 92 Fashioning Injunctions in Trademark Cases

    Chapter 93 Damages in Copyright Cases

    Chapter 94 Attorney's Fees for Frivolous Claims

    Chapter 95 Gray Market and Other Unapproved Goods

    Chapters 96 - 98 Reserved

    Chapter 99 Interference Practice

    PART IV PRACTICE IN PARTICULAR TRIBUNALS

    Subpart A Practice in P.T.O. Forums

    Chapter 100 Effective Presentation of Evidence in Proceedings Before the Patent and Trademark Office

    Chapter 101 Reissue and Reexamination in the United States Patent and Trademark Office

    Chapter 102 Practice on Appeal Before the Board of Patent Appeals and Interferences

    Chapter 103 Inter Partes Practice at the Trademark Trial and Appeal Board

    Chapter 104 Review Proceedings before the Patent Trial and Appeal Board

    Subpart B Practice at the C.A.F.C. and Other Non-P.T.O. Tribunals under its Review

    Chapter NSU Foreign Trademark Counseling and Strategy

    Chapter 105 Practice Before the U.S. Court of Appeals for the Federal Circuit

    Chapter 106 Practice at the International Trade Commission

    Chapter 107 Special Alert

    Chapter 107 U.S. Court of Federal Claims Practice

    Index

     

    Horwitz, Lester


    Lester Horwitz has been in practice as a patent attorney for over 40 years, representing clients before the U.S. PTO, acting on their behalf in securing protection in foreign patent offices and in licensing and enforcing their intellectual property.

    Mr. Horwitz has extensively written on intellectual property issues and has lectured before U.S. and foreign patent law associations and, on invitation, to foreign patent office personnel.

    His education includes a Ph. D. from New York University and an LL. B. from the University of Missouri.

    He speaks from experience as both a patent attorney and as an inventor who has patents on his own research.

    Ethan Horwitz, M.S., J.D., Member, N.Y. Bar and Partner King & Spalding

    Lisa Hershman, B.A., Yale University, J.D., Harvard Law School

     

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