Intellectual Property Practice

Practical, nuts-and-bolts treatment of common issues

  • Product Number: 2040302B00
  • Publication Date: 11/16/2020
  • Edition: 4th Edition 2020
  • Copyright: © 2020 MCLE, Inc.
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  • Product Description
  • Table of Contents
  • Editors & Authors
  • Product Description

    Product Description

    Over the past 20 years, intellectual property law practice has crept into the mainstream of a lawyer's daily work. While familiarity with IP property asset protection was once a narrow specialty, it is now a key element in the "portfolio" of skills of business and commercial lawyers and most litigators. In fact, a sophisticated knowledge of IP is a prerequisite for transactional corporate, business and commercial practice. IP knowledge is power; savvy in this hot area is increasingly valuable and marketable.

    Rather than taking an academic approach to this potentially complex area, MCLE's Intellectual Property Practice cuts straight through erudite laws and regulations, explaining in plain language how to recognize, protect, enforce and value intellectual property claims as they arise in the business context. Topics covered include patent, trademark, trade secret and copyright law and practice.

    Organized according to the major categories of intellectual property practice, this manual first defines the concepts, and then guides the user through how to obtain rights, how to protect a portfolio, the cresting decisions that impact this dynamic area of law, and the many sources of primary law that are constantly shifting and evolving, especially as a result of the Web's influence on the creative process.

    Recent updates:

    • Update: November 2020

      Dear Subscriber:

      Thank you for choosing to keep your intellectual property library up to date with this new edition of Intellectual Property Practice. Inside, you will find new discussions of topics including the following:

      • Random auditing of trademark registrations. See chapter 6 for information on what happens when a registration is audited, and what the owner is required to submit by way of proof of use. The chapter also notes the consequences of failing to provide proof of use.
      • Trademarks; cannabis products. In chapter 6, find a Practice Note pertaining to the Agriculture Improvement Act of 2018, Pub. L. No. 115-334 (the 2018 Farm Bill), which updated the definition of "marijuana" to excise "hemp"—meaning cannabis plants and derivatives such as CBD that contain no more than 0.3 percent THC on a dry-weight basis. The reader is warned about the potential for refusal of registration for certain marks based on the applicant's trade practices.
      • Electronic signatures; online terms of use. Chapter 7 cites a 2020 decision on the issue of electronic signatures, the "E-Sign Act," and the copyright consequences of clicking "I agree" on social media sites.
      • Candor. See chapter 9 for a caution based on a 2020 Court of Appeals decision due diligence and avoiding the fact or appearance of violation of the duty of candor by patentee plaintiffs. The caution discusses potential consequences, including patent unenforceability, sanctions, reputation loss, and disciplinary measures.
      • FDA approval as intellectual property. Chapter 9 addresses the FDA's announcement of its position with regard to limited modifications to the manufacturing of devices approved through the PMA program or the Humanitarian Device Exemption (HDE) program during the COVID-19 public health emergency. Chapter 9 also discusses the FDA's proposed rule, 83 Fed. Reg. 63,127 (Dec. 7, 2019), to establish a process for submitting de novo classification requests as an alternative to a PMA submission.

      We at MCLE trust that you will find this new information useful in your IP practice, and valuable in maintaining your law library.


      Maryanne G. Jensen, Esq., MCLE Director of Publications

  • Table of Contents

    Table of Contents

    expand all
    Chapter 1 expand

    Introduction: Metes and Bounds of Intellectual Property

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    Chapter 2 expand

    Exhibit 2A

    - Mononucleosis Detection Technology License Agreement (Version A, Tending to Favor Licensor) Buy Form

    Exhibit 2B

    - Viral Detection Technology License Agreement (Version B, Tending to Favor Licensee) Buy Form

    Exhibit 2C

    - Form of Agreement for Confidential Disclosure to a Third Party Buy Form

    Exhibit 2D

    - Form of Patent Assignment Buy Form

    Exhibit 2E

    - Employee Noncompetition, Nonsolicitation, Nondisclosure, and Assignment of Inventions Buy Form

    Exhibit 2F

    - Form of Agreement for Two-Way Exchange of Confidential Information Buy Form

    Exhibit 2G

    - Form of Assignment Accompanying Patent Application Buy Form

    Exhibit 2H

    - Biological Material Transfer Agreement Buy Form

    Exhibit 2I

    - UBMTA Form of Biological Material Transfer Agreement Buy Form

    Exhibit 2J

    - Form of Agreement for Employees and Consultants Buy Form
    Chapter 3 expand

    Exhibit 3A

    - Timing and Costs for Patent Protection Buy Form

    Exhibit 3B

    - Patent Infringement Complaint Buy Form

    Exhibit 3C

    - Patent Infringement Answer and Counterclaim Buy Form

    Exhibit 3D

    - Reply to Counterclaim Buy Form

    Exhibit 3E

    - Patent Infringement Demand Letter Buy Form
    Chapter 4 expand
    Chapter 5 expand

    Noncompetition Agreements and Related Restrictive Covenants

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    Exhibit 5A

    - Blogs Addressing Trade Secrets and Noncompetes Buy Form
    Chapter 6 expand

    Checklist 6.1

    - Trademark-Related Questions to Ask Prior to Commencing Clearance Process Buy Form

    Checklist 6.2

    - Reasons for Trademark Application Refusal Buy Form

    Exhibit 6A

    - Glossary of Trademark-Related Concepts Buy Form

    Exhibit 6B

    - Trademark-Related Resources Buy Form

    Exhibit 6C

    - Trademark Request Form (Internal/Corporate) Buy Form

    Exhibit 6D

    - New Trademark Application Filing Checklist Buy Form
    Chapter 7 expand

    Checklist 7.1

    - U.S. Copyright Office Copyright Information Circulars That Should Be Reviewed by Nonspecialists Buy Form

    Exhibit 7A

    - Online Resources for Copyright Law Buy Form

    Exhibit 7B

    - Assignment of Copyrights Buy Form
    Chapter 8 expand

    FDA Approval and Licensing as Intellectual Property

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    John A. Hamilton, Esq., Law Office of John A. Hamilton LLC
    John C. Serio, Esq.,

    Exhibit 8A

    - 8+2(+1) Exclusivity Formula Buy Form
    Chapter 9 expand

    Ethics Issues in Intellectual Property

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  • Editors & Authors