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Intellectual Property Counseling and Litigation

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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 November 2014, the following units have been revised by these leading and practicing U.S. intellectual property attorneys:

  • Chapter 10 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 27 Export Control of Intellectual Property by Roszel C. Thomsen II and Wesley A. Demory, attorneys at Thomsen and Burke LLP, which provides international trade and export counsel to a wide range of companies.
  • Chapter 101 Post Grant Proceedings under the AIA: Review Proceedings before the Patent Trial and Appeal Board by Lissi Mojica and Kevin Greenleaf.
  • Chapter 106 Practice at the International Trade Commission by Ethan Horwitz, Jeffrey M. Telep, Tony V. Pezzano, Thomas C. Lundin Jr., & Taryn K. Williams.

    Recent added units to the product include:
  • Chapter 2 Trademark Law Overview by Ethan Horwitz, Carlton Fields Jorden Burt, LLP.

    First published in 1988.

    7 Volumes; Loose-leaf; updated with revisions.

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

  • Authors / Contributors

    Table of Contents


    PART I OVERVIEW OF THE LAW


    Chapter 1 Patent Law Overview


    Chapter 2 Trademark Law Overview


    Chapter 3 Reserved


    Chapter 4 Reserved


    Chapter 5 Standards of Protectable Trade Secrets


    Chapter 6 Reserved


    Chapter 7 Reserved


    PART II PROTECTING THE SUBJECT MATTER


    Chapter 8 Overview of Patent Prosecution


    Chapter 9 Drafting Patents with a View to Litigation


    Chapter 10 Protecting Designs by Trademarks, Copyrights, and Design Patents


    Chapter 11 Protecting Biotechnology


    Chapter 12 Biotechnology Deposit Requirements


    Chapter 13 The Chip Protection Act


    Chapter 14 Software Protection


    Chapter 15 Process Patents


    Chapter 16 Intellectual Property Protection of E-Commerce


    Chapter 17 Reserved


    Chapter 18 Reserved


    Chapter 19 Reserved


    PART III INTELLECTUAL PROPERTY IN BUSINESS LAW SETTINGS


    Chapter 20 Arbitration and Arbitration Clauses


    Chapter 21 Technology Joint Ventures

    Chapter 22 Drafting and Enforcing Noncompetition Clauses for Employees


    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


    Chapter 30 Defensive Measures Against Counterfeiting


    Chapter 31 False Comparative Advertising


    Chapter 32 Gray Market and Other Unapproved Goods


    Chapter 33 Chip Protection: Litigation, Licensing and International Issues


    Chapter 34 Reserved


    Chapter 35 Reserved


    Chapter 36 Reserved


    Chapter 37 Reserved


    Chapter 38 Reserved


    Chapter 39 Reserved


    PART IV COUNSELING IN FOREIGN SETTINGS


    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


    Chapter 45 Containing Costs in Intellectual Property Litigation


    Chapter 46 Legal Opinions in Intellectual Property Matters


    PART V LITIGATING THE INTELLECTUAL PROPERTY CASE


    A. OVERVIEW


    Chapter 47 Reserved


    Chapter 48 Reserved


    Chapter 49 Overview of Patent Litigation


    Chapter 50 Risk Evaluation in Intellectual Property Litigation


    Chapter 51 Reserved


    Chapter 52 Willfulness and Defense to Willfulness


    Chapter 53 Alternative Dispute Resolution


    Chapter 54 Settlement Techniques


    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


    Chapter 60 Reserved


    Chapter 61 Reserved


    Chapter 62 Reserved


    Chapter 63 Reserved


    Chapter 64 Reserved


    Chapter 65 Survey of Preliminary Injunction Requirements


    Chapter 66 Federal Ex Parte Temporary Relief


    Chapter 67 Reserved


    Chapter 68 Reserved


    Chapter 69 Reserved


    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


    Chapter 73 Reserved


    Chapter 74 Reserved


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


    Chapter 76 Reserved


    Chapter 77 Trial Techniques in Jury and Bench Trials of Copyright Cases


    Chapter 78 Reserved


    Chapter 79 Reserved


    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 Compensation in Patent Infringement


    Chapter 86 Reserved


    Chapter 87 Reserved


    Chapter 88 Damages in Copyright Cases


    Chapter 89 Reserved


    Chapter 90 Personal Liability of Officers and Directors for Corporate Infringement of Intellectual Property Rights


    Chapter 91 Damages for Trademark Infringement


    Chapter 92 Fashioning Injunctions in Trademark Cases


    Chapter 93 Reserved


    Chapter 94 Attorney's Fees for Frivolous Claims


    Chapter 95 Reserved


    Chapter 96 Reserved


    Chapter 97 Reserved


    Chapter 98 Reserved


    Chapter 99 Interference Practice


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


    Chapter 101 Post Grant Proceedings under the AIA: Review Proceedings before the
    Patent Trial and Appeal Board


    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


    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 U.S. Court of Federal Claims Practice


    Index