Product Description

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.

  Cordially,

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

Table of Contents

Chapter 1 expand

Introduction: Metes and Bounds of Intellectual Property

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Jerry Cohen, Esq., Burns & Levinson LLP

Chapter 2 expand

Developing and Realizing Value from a Patent Portfolio

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Timothy M. Murphy, Esq., Nutter McClennen & Fish LLP
Jay Sandvos, Esq., Sunstein LLP
Bruce D. Sunstein, Esq., Sunstein LLP

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

Understanding Patents for the Legal Advisor

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David E. Blau, Esq., Daly Crowley Mofford & Durkee LLP
Timothy M. Murphy, Esq., Nutter McClennen & Fish LLP
Jay Sandvos, Esq., Sunstein LLP
Bruce D. Sunstein, Esq., Sunstein LLP

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

Trade Secret Law

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Russell Beck, Esq., Beck Reed Riden LLP

Chapter 5 expand

Noncompetition Agreements and Related Restrictive Covenants

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Russell Beck, Esq., Beck Reed Riden LLP

Exhibit 5A

- Blogs Addressing Trade Secrets and Noncompetes Buy Form

Chapter 6 expand

Trademarks: Law, Practice, and Current Issues

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Deborah J. Peckham, Esq., Burns & Levinson LLP
Brooke A. Penrose, Esq., Day Pitney LLP
Mark Schonfeld, Esq.,

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

Copyright Law

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William S. Strong, Esq., Kotin, Crabtree & Strong LLP

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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Jerry Cohen, Esq., Burns & Levinson LLP

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