Intellectual Property Counseling and Litigation

A comprehensive practice guide to both client counseling and dispute resolution in all areas of intellectual 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 November 2020, the following units have been revised by these leading and practicing U.S. intellectual property attorneys:

•  CHAPTER 48: Containing Costs in Intellectual Property Litigation by Rajkumar Vinnakota, a Partner at Janik Vinnakota LLP.
•  CHAPTER 53: Alternative Dispute Resolution by Angela T. Puentes-Leon, a products liability and commercial litigation attorney practicing in Florida.
•  CHAPTER 54: Settlement Technique by Miles J. Alexander, Senior Partner and Lisa Pearson, Partner at Kilpatrick, Townsend & Stockton LLP.
•  CHAPTER 75: Experts by General Editor Ethan Horwitz, a Shareholder with Carlton Fields, P.A.
•  CHAPTER 80: Trial Techniques in Trade Secret Cases by by Eric E. Bensen, an internationally recognized intellectual property law author, consultant and expert witness.
•  CHAPTER 88: Damages in Copyright Cases by Roberta Jacobs-Meadway, who continues to write and speak on IP related topics and has served as an expert witness in connection with trademarks
•  CHAPTER 90: Personal Liability of Officers and Directors for Corporate Infringement of Intellectual Property Rights Katrina Rose, J.D., Ph.D., who writes extensively on IP related topics and the history of transgender law.

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

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Table of contents

VOLUME 1

PART I OVERVIEW OF THE LAW


CHAPTER 1 Patent Law Overview

CHAPTER 2 Trademark Law Overview

CHAPTER 3 Reserved

CHAPTER 4 Reserved

CHAPTER 5 Trade Secret Overview

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


VOLUME 2

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 Privacy, Publicity and Intellectual Property

CHAPTER 19 False Comparative Advertising

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 The Interface between Antitrust and Intellectual Property Law Principles

CHAPTER 24 Bankruptcy and Intellectual Property Licensing

CHAPTER 25 Intellectual Property in Government Contracts

CHAPTER 26 Tax Planning for Intellectual Property


VOLUME 3

CHAPTER 27 Export Control of Intellectual Property

CHAPTER 28 Reserved

CHAPTER 29 Insurance Coverage for Intellectual Property Lawsuits

CHAPTER 30 Defensive Measures Against Counterfeiting

CHAPTER 31 Reserved

CHAPTER 32 Gray Market and other Unapproved Goods

CHAPTER 33 Chip Protection: Litigation, Licensing and International Issues

CHAPTER 34 Risk Evaluation in Intellectual Property Litigation

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 Reserved


VOLUME 4

CHAPTER 46 Reserved

PART V LITIGATING THE INTELLECTUAL PROPERTY CASE

A. OVERVIEW


CHAPTER 47 Overview of Patent Litigation

CHAPTER 48 Containing Costs in Intellectual Property Litigation

CHAPTER 49 Attorney-Client Privilege and Work-Product Immunity in Intellectual Property

CHAPTER 50 Legal Opinions in Intellectual Property Matters

B. EVALUATING AND RESOLVING THE CONTROVERSY BEFORE TRIAL

CHAPTER 51 Reserved

CHAPTER 52 Reserved

CHAPTER 53 Alternative Dispute Resolution

CHAPTER 54 Settlement Techniques

C. JURISDICTION AND CAUSES OF ACTION

CHAPTER 55 Jurisdiction and Venue in Intellectual Property Litigation

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

CHAPTER 57 Checklist of Trademark-Related Causes of Action and Defenses (With Sample Pleadings)

CHAPTER 58 Checklist of Trade Secret Causes of Action and Defenses (With Sample Pleadings)

CHAPTER 59 Checklists of Copyright Causes of Action and Defenses (With Sample Pleadings)

CHAPTER 60 Reserved

CHAPTER 61 Reserved

CHAPTER 62 Reserved

CHAPTER 63 Reserved

CHAPTER 64 Reserved


VOLUME 5

D. PRELIMINARY RELIEF


CHAPTER 65 Survey of Preliminary Injunction Requirements

CHAPTER 66 Federal Ex Parte Temporary Relief

CHAPTER 67 Reserved

CHAPTER 68 Reserved

CHAPTER 69 Reserved

E. 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

CHAPTER 73 Reserved

CHAPTER 74 Reserved

F. TRIAL TECHNIQUES

CHAPTER 75 Experts

CHAPTER 76 Surveys

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

CHAPTER 78 Trial Techniques in Jury and Bench Trials of Patent Cases

CHAPTER 79 Trial Techniques in Trademark Cases

CHAPTER 80 Trial Techniques in Trade Secret Cases

CHAPTER 81 Reserved

CHAPTER 82 Reserved

CHAPTER 83 Reserved

CHAPTER 84 Reserved

G. RELIEF

CHAPTER 85 Compensation in Patent Infringement Cases

CHAPTER 86 Fashioning Injunctions in Trademark Cases

CHAPTER 87 Damages for Trademark Infringement

CHAPTER 88 Damages in Copyright Cases

CHAPTER 89 Willfulness and Defense to Willfulness


VOLUME 6

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

CHAPTER 91 Attorney’s Fees

CHAPTER 92 Reserved

CHAPTER 93 Reserved

CHAPTER 94 Reserved

CHAPTER 95 Reserved

CHAPTER 96 Reserved

CHAPTER 97 Reserved

CHAPTER 98 Reserved

PART VI PRACTICE IN PARTICULAR TRIBUNALS

CHAPTER 99 Reserved

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 Reserved


VOLUME 7

CHAPTER 105 Practice Before the 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