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List of Forms by Chapter
Chapter 1 — Patenting Inventions
II. Patent Basics
III. [1.11] Types of Patents and Patentable Inventions
IV. [1.22] Requirements for a Patent
V. Inventorship and Ownership
VI. Deciding To Seek Patent Protection
VII. [1.35] Timing Considerations
VIII. [1.42] Keeping Records of Inventions
X. [1.47] Patenting Process
XI. Issued Patents
XII. Foreign Patents
Chapter 2 — Litigating U.S. Patent Rights in a Changing Landscape
II. Prefiling Considerations
III. Initial Filings and Related Issues
IV. Case Management Issues and Discovery
V. Claim Construction/Markman Hearings
VII. Post-Grant Procedures Under the Leahy-Smith America Invents Act
VIII. Checklists
IX. Forms
Chapter 3 — Patent Antitrust, Misuse, Exhaustion, and Inequitable Conduct
III. Patent Law from an Antitrust Perspective
IV. [3.6] Antitrust Law in General
V. [3.17] The Interaction of Patent and Antitrust Law
Chapter 4 — The Attorney-Client Privilege and the Work-Product Immunity Doctrine
II. Attorney-Client Privilege in General
V. Controlling Law and Standards
VI. Patent Prosecution
VII. [4.17] Typical Patent Department Communications
VIII. [4.26] Commonality of Interest Doctrine
IX. Reliance on Opinion of Counsel and Waiver
X. [4.40] Federal Rule of Evidence 502
Chapter 5 — Ownership and Management of Patent Rights
II. Ownership of Patent Rights
III. Management of Patent Rights
IV. Appendix — Sample Agreements
Chapter 6 — Creation and Maintenance of Trademark Rights
IV. [6.4] Types of Marks and Trade Identity
V. Adoption and Use
VI. Trademark Registration
VII. Use and Registration Outside the United States
Chapter 7 — Transfer or Loss of Trademark Rights
II. Transfer of Trademark Rights
III. [7.19] Loss of Rights
Chapter 8 — Enforcement, Remedies, and Defenses in Trademark and Unfair Competition Law
II. [8.2] Trademark Protection and Enforcement
III. [8.51] Remedies
IV. Defenses
V. Appendix — Sample Forms
Chapter 9 — Copyright Subject Matter and Exclusive Rights
I. The Concept of Copyright
II. Copyright Subject Matter
III. [9.19] Limitations on Copyright
IV. Exclusive Rights Under Copyright
V. [9.38] Formalities
VI. Duration, Renewal, and Termination of Transfers
Chapter 10 — Ownership and Transfer of Copyrights
Chapter 11 — Copyright Infringement, Fair Use, and Remedies
I. Jurisdiction and Prerequisites to Suit
II. Elements of Proof of Infringement
III. Fair Use
IV. Remedies
Chapter 12 — The Identification and Protection of Trade Secrets
I. The Nature of Trade Secrets
III. [12.6] Trade Secret Audits
IV. [12.9] Trade Secret Protection Programs
V. [12.26] The Economic Espionage Act of 1996 and Subsequent Amendments
VI. [12.30] The Defend Trade Secrets Act of 2016
Chapter 13 — Misappropriation of Trade Secrets
III. [13.3] How Trade Secrets Are Misappropriated
VI. Enforcement Mechanisms and Considerations
Chapter 14 — Trade Secret Remedies and the Inevitable Disclosure Doctrine
II. [14.2] Interlocutory Remedies
III. [14.12] Posttrial and “Permanent” Relief
IV. [14.25] Problems with After-the-Fact Relief and Nonuse Injunctions — The Inevitable Disclosure Doctrine
V. [14.29] Additional Statutory Claims: The Computer Fraud and Abuse Act
Chapter 15 — Restrictive Covenants and Post-Employment Restraints
II. [15.2] Types of Restrictive Covenants
III. [15.8] Legal Requirements
IV. [15.23] Remedies for Violation
V. [15.28] Drafting and Enforcement Issues
Chapter 16 — Jurisdiction in the Information Age
II. [16.2] Traditional Concepts of Jurisdiction
III. [16.5] Early Internet Jurisdiction Cases: Application of Traditional Jurisdictional Concepts to the Internet
IV. [16.10] Setting the Standards in Internet Jurisdiction Cases
V. Cases in Illinois and the Seventh Circuit
Chapter 17 — Licensing Online
II. [17.2] Why License Online?
III. [17.5] Pitfalls of Licensing Online
IV. [17.10] Key Considerations for Licensor
V. [17.24] Enforceability
Chapter 18 — Business Method Patents
II. [18.2] Caselaw History Regarding the Patentability of Software
III. The Business Method Patent
IV. [18.28] United States Patent and Trademark Office Guidelines for Business Method Patents
V. [18.32] National and Regional Patent Office Guidelines for Handling Business Method Patents
VII. [18.37] Litigation Effects of Business Method Patents
Chapter 19 — Software Licensing
I. [19.1] Introduction
II. [19.5] Suite of Software License Agreements
III. License Agreement
IV. Maintenance and Support
V. Source Code Escrow Agreement
VI. Regulatory Concerns: Export, Government Contracts, and Taxes
VII. [19.33] Risk Allocation
IX. Appendix
Chapter 20 — Cybercrime, Digital Evidence, and Your Intellectual Property Practice
II. The Wide, Wide World of Cybercrime
III. [20.8] Cyber Intellectual Property Compromises and Available Cybercrime Offenses
IV. [20.16] Using Digital Evidence To Build Your Intellectual Property Case
V. Managing the Cybercrime Threat to Intellectual Property
Chapter 21 — Protecting Intellectual Property in the Global MarketplaceSeth I. Appel is a Partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, in Chicago, where he focuses his practice on all aspects of trademark, copyright, unfair competition, and false advertising law, including IP clearance, prosecution, licensing, and enforcement. Mr. Appel has extensive experience litigating in federal courts and before the Trademark Trial and Appeal Board. He is the Cochair of the Copyright Society of the USA (CSUSA), Midwest Chapter, and serves on the Editorial Board of the CSUSA’s Journal. He is also a regular contributor to AIPPI e-News (the bimonthly newsletter of the International Association for the Protection of Intellectual Property), and he is active in the International Trademark Association (INTA) and ABA, Intellectual Property Law Section. Mr. Appel received his J.D. from Columbia Law School and his B.A. from Cornell University.
Richard C. Balough is a Member at Balough Law Offices, LLC, in Chicago, and concentrates his practice in intellectual property, cyberspace, and business law. Mr. Balough is a Past Cochair of the Mobile and Connected Devices Subcommittee of the American Bar Association’s Cyberspace Law Committee, Past Chair of the Chicago Bar Association’s Computer Law Committee, and a former member of the Board of Managers for the Intellectual Property Law Association of Chicago. Mr. Balough earned his LL.M. cum laude in addition to his J.D.
Glen P. Belvis is the Principal at Belvis Law, LLC, in Chicago, and practices in patent, copyright, and trade secret litigation, prosecution, and transactions. Mr. Belvis is an emeritus member of the Richard Linn American Inn of Court and the DePaul Law School CIPLIT Advisory Board. He graduated from DePaul University Law School, where he earned the West Publishing Company Hornbook Award, presented to the student with highest academic average in the class. Mr. Belvis received his B.S. from the University of Notre Dame and was an extern for Judge Bauer, U.S. Court of Appeals for the Seventh Circuit.
Matthew W. Callahan is an associate at Schiff Hardin LLP, in San Francisco, where he focuses on general litigation. Mr. Callahan earned his A.B. cum laude from Harvard University and his J.D. from New York University School of Law.
Keith G. Chval is President of Protek International, Inc., in Willowbrook, and focuses his practice on digital forensics and e-discovery. He was the first Chief of the Illinois Attorney General’s High Tech Crimes Bureau. Mr. Chval received his B.S. from Indiana University and his J.D. from the Chicago-Kent College of Law.
Bradley L. Cohn is a Managing Partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, in Chicago, where he concentrates his practice in the field of trademarks, copyrights, unfair competition, and advertising law. Before entering private practice, Mr. Cohn served as law clerk to the Honorable Anne C. Conway, U.S. District Court for the Middle District of Florida. He is a member of the International Trademark Association and the Chicago and American Bar Associations. Mr. Cohn received his B.A. from Duke University and his J.D. from the University of Michigan Law School.
Jafon Fearson is an associate at Brinks, Gilson & Lione, in Chicago, where he concentrates his practice on patent and copyright litigation. Mr. Fearson is a member of the Federal Circuit, Chicago, and American Bar Associations. He received his B.S. from the University of Alabama at Birmingham and his J.D. from the University of Missouri-Columbia.
Steven E. Feldman is a Partner at Hahn Loeser & Parks LLP in Chicago, where he concentrates his practice in intellectual property. Mr. Feldman sits on the Intellectual Property Advisory Board at George Washington University and the Executive Counsel of the Northwestern University Institute for Sustainability and Energy. He has been recognized as a Super Lawyer in Intellectual Property. Mr. Feldman received his B.S. from Northwestern University and his J.D. with honors from the George Washington University Law School.
R. Mark Halligan is a Partner at FisherBroyles, LLP, in Chicago. He is an accomplished trial lawyer who focuses his practice on intellectual property litigation including patent, copyright, trademark, and trade secret litigation in federal and state courts throughout the United States and abroad. Mr. Halligan has also developed a nationally recognized trade secrets litigation practice focused on all aspects of trade secret law. He represents individuals, middle-market companies, and large corporations, both as plaintiffs and defendants, in trade secret and noncompete disputes. He has become a “go-to” litigator on some of the most complex intellectual property matters in the United States and worldwide. Mr. Halligan has an AV Preeminent Rating from Martindale-Hubbell, and peer reviews rank him as a top lawyer in Intellectual Property in Chambers USA. Best Lawyers recognized Mr. Halligan as Lawyer of the Year in trade secrets law in 2020. Legal 500 has recognized him as a leading lawyer in trade secrets litigation in multiple years. He has also been ranked as one of the world’s Leading IP Strategists in IAM 250 and IAM 300 and was recognized as a leading TMT lawyer in Who’s Who Legal Telecommunications Media & Technology: Information Technology (2016). Mr. Halligan is a frequent lecturer on intellectual property issues; his speaking engagements include the American Intellectual Property Law Association (AIPLA), the Licensing Executives Society (LES), the United States Patent and Trademark Office (USPTO), and the Illinois Intellectual Property Law Association (IPLAC). He earned his J.D. from Northwestern University School of Law and his B.A. from the University of Cincinnati summa cum laude. Mr. Halligan has taught trade secrets law at University of Chicago School of Law for the past 30 years.
John L. Hines, Jr., is a member of Clark Hill PLC’s Intellectual Property Practice Group in Chicago, where he focuses on IP and technology transactions. Mr. Hines writes and speaks on topics relating to intellectual property and licensing. Mr. Hines received his J.D. from Northwestern University Pritzker School of Law and his A.B. from Princeton University.
Blake W. Jackson is an associate at DLA Piper LLP (US), in East Palo Alto, California. He concentrates his practice in intellectual property and patent law. He has been involved in patent sales and negotiations, patent licensing, acquisition diligence analysis, and corporate training in patents and other IP. He is a former U.S. Naval officer and enjoys working on numerous veteran’s pro bono projects. Mr. Jackson received his B.S. from the United States Naval Academy and his J.D. from Chicago-Kent College of Law.
Daniel F. Lanciloti is a Partner at Fisher & Phillips LLP in Chicago, where he is a member of the firm’s Employee Defection and Trade Secrets Practice Group. Prior to joining Fisher & Phillips, Mr. Lanciloti was a Partner for eight years at Freeborn & Peters, LLP, where he focused on trade secrets/restrictive covenants law, employment law, and general litigation. Prior to Freeborn, Mr. Lanciloti was an associate and then a Partner at Seyfarth Shaw, LLP, where he was a member of the firm’s Trade Secrets, Computer Fraud and Non-Compete Practice Group, for sixteen years. Mr. Lanciloti also worked as an Assistant Attorney General in the General Law Bureau of the Illinois Attorney General’s Office. He received his B.A. with honors from Knox College and his J.D. magna cum laudefrom the Valparaiso University School of Law.
Michael R. Levinson is a Partner at Seyfarth Shaw LLP, in Chicago, focusing his practice on litigation, with particular experience in commercial and intellectual property lawsuits. He hashandled cases in federal and state courts and in private arbitrations, in Illinois and throughout the country, involving sporting goods, financial services and products, electronics, food products, construction, business forms, and consulting services, among many others. Mr. Levinson has represented dozens of employers and employees at temporary restraining order and preliminary injunction hearings and at trials in fiduciary duty, noncompete, trade secrets, and computer fraud cases. Mr. Levinson received his undergraduate degree from Claremont-McKenna College, his M.B.A. from the University of Chicago, and his J.D. from Harvard Law School.
Timothy W. Lohse is a Partner at Manatt, Phelps & Phillips, LLP, in Redwood Shores, California, where he concentrates his practice in patent prosecution, litigation, and counseling. Mr. Lohse provides patent preparation and prosecution experience in solar panels and solar module systems, including mechanical mounting and electrical connections; solar panel electronics including technologies for measuring the efficiency of a solar panel, commercial solar panel cleaning systems, drones for inspecting crops and/or wind turbines, and an unmanned aircraft with a blimp portion and a drone portion. Mr. Lohse has a BSEE from Tufts University College of Engineering and a J.D. from Golden Gate University School of Law.
William T. McGrath is a Partner at Davis McGrath LLC in Chicago, where his area of concentration is intellectual property. He is a past adjunct professor of copyright law (1991 – 2021) and a past Associate Director of the Center for Intellectual Property Law (2004 – 2017) at the University of Illinois Chicago School of Law. He has written numerous articles on intellectual property law for the Chicago Daily Law Bulletin, for which he has twice won the Lisagor Award from the Chicago Headline Club. Mr. McGrath is Past President of the Intellectual Property Law Association of Chicago (1999 – 2000) and has served on the Board of Trustees of the Copyright Society of the USA and the Board of the Lawyers for the Creative Arts. He received his B.A. from the University of Notre Dame and his J.D. from Washington University in St. Louis.
Laura Beth Miller is a Shareholder at Brinks Gilson & Lione, in Chicago, where she serves as Chair of the firm’s International Trade group and is a member of the firm’s China Task Force. She regularly represents clients in both Section 337 investigations and federal court litigation involving a variety of patent, trademark, unfair competition, trade secret, and copyright issues. In addition, she has extensive commercial litigation experience in the areas of contract, antitrust, RICO violations, and bankruptcy. She is a frequent speaker on intellectual property issues and an adjunct professor at The John Marshall Law School. She also was guest lecturer on intellectual property issues at St. Peter’s College, Oxford University. Ms. Miller received her B.A. from the University of Virginia and her J.D. from the Marshall-Wythe School of Law at the College of William and Mary.
D. James Nahikian is Managing Principal of Nahikian Global Intellectual Property & Technology Law Group, in Chicago, where he serves clients in respect to patent, trade identity, trade secrets, copyright, and digital rights matters. Mr. Nahikian received his undergraduate degree from the University of Michigan at Ann Arbor, M.S. from DePaul University, and J.D. with concurrent LL.M. coursework in intellectual property law from The John Marshall Law School, where he was editor of the Journal of Computer and Information Law and received the first prize award for copyright paper in the ASCAP-sponsored Nathan Burkan Competition.
John S. Paniaguas is Of Counsel to Clark Hill PLC in Chicago, where he focuses his practice on patent matters. Mr. Paniaguas is a member of the Intellectual Property Law Association of Chicago and the Lake County (IN) Bar Association. Mr. Paniaguas received his B.S.E. from Purdue University-Calumet and his J.D. from DePaul University College of Law.
Matthew F. Prewitt is a Partner at ArentFox Schiff LLP in Chicago, where he is Co-Leader of the Trade Secrets, Noncompetes & Employee Mobility Group. He has been recognized by the Legal 500 United States — Intellectual Property: Trade Secrets (2016 – present), Best Lawyers in America (2023 – 2024), and Crain’s Chicago Business (Notable Gen X Leaders in Law (2022)). He served as a judicial clerk to the Honorable John E. Sprizzo of the U.S. District Court for the Southern District of New York (1997 – 1999) and is an adjunct professor of complex civil litigation and data privacy law at the Chicago-Kent College of Law (2008 – present). Mr. Prewitt received his B.A. from Delta State University and his J.D. with honors from the University of Chicago School of Law, where he was a Phi Kappa Phi graduate fellow and served as the Symposium Editor for the Harvard Journal of Law and Public Policy Studies (1996).
Marc V. Richards is a Partner of Crowell & Moring LLP in Chicago and concentrates in patent law. He is a Past Chair of the International Association for the Protection of Intellectual Property — U.S. Chapter, a founding board member of the Patent Trial and Appeal Board Association, and a Past President of the Intellectual Property Law Association of Chicago. Mr. Richards received his B.S. in chemical engineering from Washington University at St. Louis, his M.B.A. with honors from the University of Chicago, and J.D. cum laude from Loyola University of Chicago.
Sherry L. Rollo is a Partner at Hahn Loeser & Parks LLP in Chicago, where she concentrates her practice in intellectual property. Ms. Rollo is a member of the International Trademark Association, Committee Chair of the Licensing Executives Society International, and on the Board of Trustees for National History Day. Ms. Rollo received her undergraduate degree from the University of Texas at Austin and her J.D. from University of Illinois Chicago School of Law with a certificate from the Center for Intellectual Property Law.
Linda K. Stevens is Of Counsel to Smith O’Callaghan & White in Chicago, where she focuses her practice on intellectual property and commercial disputes. She is a Past Chair of an American Bar Association Trade Secrets subcommittee. Ms. Stevens has been named an Illinois Super Lawyer for several years and was named among that organization’s Top 50 Illinois Women Lawyers in 2011 and 2012. She was selected by Chicago Magazine as a Top Lawyer in Illinois in 2018 and was included in the Legal 500’s “Leading Lawyers” list in Intellectual Property: Trade Secrets. She is an adjunct professor at Northwestern University Pritzker School of Law and Chicago-Kent School of Law. Ms. Stevens received her B.A. cum laude from Kalamazoo College and her J.D. cum laude from the University of Michigan Law School.
Keith D. Weiss is an associate at Brinks Gilson & Lione, in Ann Arbor, Michigan, where his focus is intellectual property law and patents. Mr. Weiss has over 20 years of corporate research and development experience and is listed as an inventor on more than 30 patents. He received his B.S. magna cum laude from Clemson University, where he was the recipient of the Mark Bernard Hardin Award; his Ph.D. from the University of Florida; and his J.D. cum laude from Thomas Cooley Law School, where he was the recipient of an Honors Scholarship.
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