IBLC Meeting in Jerusalem
The International Business Law Consortium Spring Business Meeting this year will be attended by Chirag Patel and Richard Holzer. The meeting is taking place in Jerusalem on March 19-21. Click here for more details.
Testimonial from Black’s Smuggler Winery
“We recently were reviewed by a trademark attorney who was presenting at our annual New Mexico Wine and Vine conference. We received exceptionally high marks for being the business that “Did it right” with regards to our trademark and branding. Thank you for your help.” –Tony Black, Owner, Black’s Smuggler Winery
New Rules for Trademark Applications at USPTO
Effective February 17, 2017, new rules will be in place at the US Patent and Trademark Office (USPTO) affecting Section 8 affidavits of use for trademark applications and registrations. “The USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations.”
Before this date, trademark registrants and applicants only needed to provide a specimen of one of the goods or services listed in each international classification. We suggest that registrants and applicants provide a specimen for each of the goods and services listed in an application or registration to reduce requests for additional information. If registrants and applicants are not using a trademark in connection with applied-for or registered goods and services, or cannot prove such use, those should be deleted.
When it would be overly burdensome to provide specimens for every good and/or service listed in an application, we suggest that such specimens be maintained in the applicant or registrant’s files in the event of a request for more information from the USPTO.
Richard Holzer, Adjunct Professor
Rick Holzer will teach as an Adjunct Professor at the University of Denver, Sturm College of Law for the Spring semester of 2017.
Richard Holzer “Barrister’s Best 2016” in Law Week Colorado
Congratulations to Rick Holzer who is this year’s People’s Choice “Best Intellectual Property Lawyer (Non-Litigator)” in the Barrister’s Best 2016 Law Week Colorado. Click to view the article snippet and announcement.
HolzerIPLaw, PC is now Doing Business as Holzer Patel Drennan
HolzerIPLaw will now be known as HOLZER PATEL DRENNAN going forward. Our new name better reflects our management structure by recognizing each partner in the firm. There will be no further alteration to our policies or how we execute our business practices, however our website and email addresses will adjust to emulate our name change: www.hpdlaw.com and @hpdlaw.com.
Overcoming §103 Rejections of Software and Electronics Related Patents: Leveraging Recent Decisions and USPTO Guidance
Chirag Patel will participate in a live CLE webinar on Thursday, October 6 @ 1:00pm EDT along with Charles Bieneman, Member at Bejin Bieneman. They will provide guidance for patent counsel for overcoming §103 rejections for software and electronics related patents. Click here for more details.
Converse & Jim Beam
After Converse filed suit against multiple shoe retailers and shoe companies for use of its trademarked Chuck Taylor shoe design, the International Trade Commission (ITC) has invalidated the trademark. The ITC noted that evidence of similar looking shoes designed by competitors over the past eighty years weighs strongly against a finding of secondary meaning, which is necessary to successfully enforce the trademark. In other trademark news, the Ninth Circuit revived a trademark case against Jim Beam for trademark infringement for the Pucker logo. The plaintiff, the maker of Johnny Love Vodka uses lips in its logo as well. The District Court initially dismissed the Case on summary judgment, but the Ninth Circuit held that the District Court used the wrong standard to decide summary judgment because burden was placed on the plaintiff to prove the merits of the claims. The Ninth Circuit also noted that a genuine issue of material fact remained regarding likelihood of confusion, sending the case back to the District Court for trial.
Celebrating 5 Years!
HolzerIPLaw is now celebrating its 5th Anniversary! We celebrated in style with a beer tasting and excellent food:
Brexit Impact on Patents
With the United Kingdom’s popular vote in support of leaving the European Union (EU) on June 23, 2016, questions may arise about the effect the referendum, and the UK’s possible exit from the EU, may have on UK and European patent rights and procedures. As it stands now, little will change.
The referendum was effectively an opinion poll. Should the UK government proceed with exiting the EU, Article 50 of the Treaty on European Union provides an extendable 2-year period for a leaving state to negotiate an exit with the other member states. During that time the UK will remain a part of the EU, with all applicable rights, privileges, and obligations. Other aspects of the exit may continue for several more years, including, for example, the negotiation of a new trade agreement.
Currently, patent applicants may seek protection in the United Kingdom (a) by filing a national patent application at the UK Intellectual Property Office or (b) by filing a European patent application at the European Patent Office (EPO). The EPO is not a European Union institution, being established instead by a separate multilateral treaty, the European Patent Convention (EPC). Even if the UK is no longer a member of the EU, it will presumably still be a member of the EPO, allowing the UK patent attorneys to continue representing clients at the EPO. Under the EPC, a European patent, once granted, will still exist as a bundle of national rights that must be validated, maintained, and enforced in each selected EPC country. Patent filing, prosecution, maintenance, and enforcement will, therefore, be largely unaffected in the near term.
The UK’s potential exit from the EU may nevertheless impact certain aspects of UK and EU patent law in the future. Even the referendum’s outcome itself may delay or chill introduction of a new unitary patent and the Unified Patent Court in Europe. In addition, after exiting the EU, UK courts and lawmakers may abandon certain EU doctrines and perspectives of patent law. For example, the EU principle of free movement of goods, as embodied in rules on parallel imports, may no longer be recognized by UK courts. Likewise, UK lawmakers may choose to revise the UK’s national patent laws in a manner that is inconsistent with current EU principles, particularly in biotechnology and the life sciences where the UK and the EU have already experienced disagreements.
As such, while significant immediate effects appear unlikely, the referendum’s outcome and the potential UK exit from the EU present reasons for re-evaluating patent strategies in order to anticipate possible patent law changes in both the UK and the EU.
HolzerIPLaw, PC Press Release:
Do you need to update your confidentiality agreements and trade secret policies?
On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act (“DTSA”), creating a US federal cause of action for trade secret misappropriation. We believe that this new law may have an impact on many of our clients who possess and protect their confidential information.
It is important to note that the new law requires that both employees and independent contractors be notified of certain exemptions in the confidentiality of trade secrets. Without proper notification, employers risk the loss of punitive damages and attorney’s fees that they may have been otherwise able to collect in an action for misappropriation of trade secrets. This requirement applies to all agreements that are entered into or updated after May 11, 2016.
If you have concerns about whether this new law affects you, please contact our office.
Judith Keene, Esq.
This Press Release is for informational purposes only and is not intended to be legal advice. If you have specific legal questions, please contact a qualified practitioner.
Colfax Marathon 2016
HolzerIPLaw participated in the 2016 Colfax Marathon with two relay teams. Team one had a finish time of 4:02:56 while Team two finished at 4:55:39. Congrats to all participants!
Defend Trade Secrets Act 2016
The House and Senate passed the Defend Trade Secrets Act of 2016, effective April 27, 2016. (S. 1890)
The bill will now go to President Obama for approval – which is expected. Trade secrets have previously been protected by stat laws in the U.S. This bill would amend the Economic Espionage Act of 1996 to permit a private federal civil action for misappropriation of a trade secret that is “related to a product or service used in, or intended for use in, interstate or foreign commerce.” The bill allows for seizure of property as necessary to prevent “propagation or dissemination” of the trade secret.
In a hearing, the Court may:
- Grant an injunction as appropriate to prevent misappropriation
- Award damages for actual losses
- Award damages for unjust enrichment caused by the misappropriation (no duplicative recovery)
- Grant a reasonable royalty in lieu of damages
In addition, if the trade secret it “willfully and maliciously misappropriated,” the Court may award exemplary damages – not more than 2x the amount of damages awarded.
Finally, if a claimant makes a claim of misappropriation in bad faith or in cases of willful misappropriation, the court may award reasonable attorney’s fees to the prevailing party. Additional provisions exist. This federal right of action would not supersede state actions, but gives claimants an additional venue.
IBLC Meeting in Peru
At the spring meeting of the International Business Law Consortium (IBLC) in Lima, Peru, Chirag Patel will be moderating a panel discussion on TransPacific Partnership (TPP) agreement. While the TPP has been controversial in some of the participating countries, especially USA, most observers believe that it will be ratified by all member countries.
During the panel discussion, Rick Holzer will address the IP provisions of the TPP and Chirag Patel will address the eCommerce provisions of the TPP as to how they affect businesses in participating countries, especially United States. John Pinney of GraydonHead (Cincinnati, OH) will be discussing the dispute resolution provisions of the TPP, Fernando Rivadeneyra of Vidaur Mora Espinosa (Mexico) will discuss the environmental law related provisions of the TPP, Carlos Alayza of Alayza Consulters Legales (Lima, Peru) will be discussing the Peruvian perspective of TPP, and Roderick McCloy of SHK Law Corporation (Canada) will be discussing the Canadian perspective of the TPP.
First Steps: What is a trademark?
Click here to read Judith Keene’s article on basic protection methods for your trademark.
2016 Annual Conference & Expo: Leading the Business of Law
Cathi VanFleet has won a scholarship from the local Association of Legal Administration chapter to join in the 2016 Annual Conference & Expo. The conference will be held in Los Angeles, California at the Los Angeles Convention Center May 22-25, 2016. Click here to find out more.
Judith Keene Appointed to Trademark Office Practices Committee
Judith Keene has been appointed to the Trademark Office Practices Committee of the International Trademark Association (INTA) for 2016-2017. The committee evaluates and suggests improvements to trademark office practices, procedures, operations, and regulations at the national, regional, and international levels. The committee will monitor trademark office developments in various jurisdictions, complete analyses and propose policy recommendations to the Board. Work includes report and submission writing and advocacy in conjunction with relevant INTA committees and staff.
HolzerIPLaw Participates in IBLC Meeting in Brussels
Chirag Patel and Rick Holzer presented an intellectual property program at the Annual Meeting of the International Business Law Consortium in Brussels, Belgium on topics including an intellectual property overview, a hypothetical case study on an IP Due Diligence for a business acquisition that highlighted commonly overlooked IP issues during mergers and acquisitions, and a review of the intellectual property issues in the Trans-Pacific Partnership treaty. Other program presenters included Elizabeth Bridge, Ceri Delemore, Norman Neyrinck, and Renaud Le Squeren from other IBLC delegate firms.
Welcome to J.T. Lomenick
Welcome to our new Attorney, J.T. Lomenick! J.T. has both been an intern and an extern with HolzerIPLaw, PC while earning his law degree from the University of Denver, Sturm College of Law. J.T. has officially joined us starting August 26, 2015. Welcome to the team!
After three years on the Board of Directors for the Colorado IP American Inn of Court, Rich Holzer has been elected Vice President for the 2015-2016 term. Bill Vobach is currently in his second year on the Board, and Chirag Patel has been newly elected for a three year term. Congratulations HolzerIPLaw attorneys!
Welcome to Lindsay Sugano
Welcome to our new File Clerk and IT support, Lindsay Sugano! Lindsay first interned with HolzerIPLaw, PC while earning her Paralegal Certificate from Arapahoe Community College and has since take the position of File Clerk starting on June 24, 2015. Welcome to the team!
Bill Vobach in the Annual Survey of Colorado Law
Bill Vobach recently authored the chapter on “Intellectual Property Law” in the 2014 Annual Survey of Colorado Law, now available from Continuing Legal Education in Colorado. This is Bill’s fourth year writing the IP Law chapter for the Annual Survey.
– 2015.05.20 –
Inspire: 2015 Innovation Expo
Mara DeBoe will be answering IP questions Friday, May 1 at the Inspire: 2015 Innovation Expo located at the Minneapolis Convention Center Consultant Corner. Click here for more information.
– 2015.04.21 –
HolzerIPLaw Participates in IBLC Meeting in Chicago
In April 2015, Rick Holzer and Eric Drennan attended the International Business Law Consortium (IBLC) annual meeting in Chicago, Illinois. Rick and Eric announced the formation of an Intellectual Property Practice Group for the IBLC. Click here for more information about IBLC business meetings around the world.
– 2015.04.20 –
Rick Holzer IP Star of 2015
Rick Holzer has been named IP Star of 2015. This is his third year for being added to the IP Stars list. Click here to see all members.
– 2015.04.06 –
Welcome to Melanie Baum
HolzerIPLaw welcomes Melanie Baum to the team! She joined us March 16, 2015 and is filling the position of Legal Secretary. Melanie comes to Denver from a small town near Wichita, Kansas in 2010 and brings with her over 20 years of legal experience.
– 2015.03.16 –
Rachel Carnaggio is Selected as a Colorado “Rising Star”
Super Layers® has selected Rachel Carnaggio as a Colorado “Rising Star.” Super Lawyers® is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. Each year, no more that 2.5% of the lawyers in the state are selected to receive this honor.
– 2015.03.02 –
Minnesota Office has Moved!
The Minnesota office of HolzerIPLaw, PC has moved! Mara DeBoe is now located in the east metro area in Lake Elmo (just north of 94 off Radio Drive). The address is:HolzerIPLaw, PC
8530 Eagle Point Blvd., Ste. 100
Lake Elmo, MN 55042
The direct line for Mara remains the same (651.323.2227) as well as the main line for HolzerIPLaw, PC (720.204.5666).
– 2015.02.02 –
U.S. Magistrate Jude Kristen Mix, who chairs the Mentor-Mentee program for the Colorado IP Inn of Court, recently organized a tour of the Colorado Supreme Court building, conducted by Chief Justice Nancy Rice for Mentor-Mentee Inn members.
– 2015.01.21 –
Articles in The Docket, Written by Judith Rosenblum
Judith explores issues such as balancing ethical obligations and technology in a law practice and the ethical issues in storing legal documents on the cloud in her two articles in The Docket, An Ethical Practice in Today’s Electronic World and Ethical Dilemmas or A No Good, Terrible, Bad Day.
– 2014.12.12 –
Rick Holzer Presents in Webinar
Presented by IP Legal Network, Rick Holzer, Charles Bieneman (Benjin Bieneman, PLC), and John Kong (Western, Hattori, Daniels, and Adrian, LLP) gave a webinar lecture on what is and what is not patent-eligible under 35 U.S.C. § 101 following the Alice v. CLS Bank case. This webinar provides practical advice on how to handle software and business method inventions in the post-Alice world. Click here to watch the recording and click here to view the PowerPoint. To read John Kong’s paper, click here.
– 2014.12.09 –
HolzerIPLaw Participates in IBLC Meeting in Barcelona
In September 2014, Rick Holzer and Chirag Patel attended the International Business Law Consortium (IBLC) annual meeting in Barcelona, Spain. Click here for more information about IBLC business meetings around the world.
– 2014.09.21 –
Rachel Carnaggio Addresses Pretext Investigations in the Colorado Lawyer
The existing ethical dilemma for a Colorado attorney involved in misrepresentation or nondisclosure when gathering pre-filing evidence in compliance with Rule 11. Click here to login and view the article.
– 2014.05.28 –
Bill Vobach in the Colorado Bar Association’s Annual Survey of Colorado Law
Bill Vobach has been writing the intellectual property chapter for the Colorado Bar Association’s book Annual Survey of Colorado Law for the last few years. While the book focuses on Colorado law, the intellectual property chapter tends to be dominated by federal developments. The Annual Survey for 2013 was recently released and can be purchased from the CBA-CLE website. Bill’s intellectual property chapter can be purchased here.
– 2014.04.01 –
Podcast by Judith Rosenblum
Judith Rosenblum gives listeners an overview of Trademark law, including some of her favorites, in an interview with IPLegalNetwork.com’s Mark Gilman. Click here listen to the podcast.
– 2014.02.14 –
HolzerIPLaw Hosts the Second Annual IP Legal Network Conference
HolzerIPLaw, PC will be hosting the Second Annual IP Legal Network Conference on March 27 and 28, 2014. Click here to view the invitation to the event.
– 2014.01.18 –
Judith Rosenblum Writes on Google and the Author’s Guild
Judith Rosenblum, Senior Counsel at HolzerIPLaw, PC, writes, “Google wins SJ motion against the Authors Guild in USDC S.NY on 11/14/13. Google’s digitization of books determined to be fair use.” Please click here to view our LinkedIn page and view Judi’s work!
– 2013.11.14 –
HolzerIPLaw joins Facebook
HolzerIPLaw has joined Facebook! Click here to “Like” and view our new page.
– 2013.11.10 –
Presentation by Chirag Patel
We are pleased to announce that Chirag Patel, a senior associate at HolzerIPLaw, PC will be presenting at the 9th Annual International Seminar on Intellectual Property Rights in Ahmedabad, India on November 10th. The subject of Chirag’s presentation is “Current Updates on the US Patent Law & Recent Decisions from US Federal Circuit Court.” The program for the Seminar is attached herewith. Chirag’s presentation will be available upon completion of the seminar.
– 2013.11.09 –
Welcome to Rachel Carnaggio
On October 1, 2013, Rachel joined our team. Rachel has represented clients in state and federal courts, mediation and at trial in cases involving products liability, medical devices, pharmaceuticals, and life sciences. In her practice, Rachel draws on her considerable legal experience in litigation and transactions, as well as practical experience gained from 10 years as a molecular and cellular biologist.
– 2013.10.07 –
HolzerIPLaw participates at the IBLC Business meeting in Dublin
In September 2013, Rick Holzer and Chirag Patel attended the IBLC business meeting in Dublin, Ireland. Click here for more information about IBLC business meetings around the world.
– 2013.09.22 –
HolzerIPLaw joins the IBLC
In December 2012, HolzerIPLaw joined the International Business Legal Consortium (IBLC), which is an international alliance of select law firms and business professionals whose members enjoy impeccable reputations for service-oriented professionalism. Click here for more information about the IBLC.
– 2013.09.22 –
Podcast by Chirag Patel
Chirag Patel of HolzerIPLaw recently created a Podcast on foreign filing of patent applications. Click here to find the Podcast.
– 2013.09.08 –
HolzerIPLaw joins the IPLegalNetwork
Recently, HolzerIPLaw joined the IPLegalNetwork, which is a collaborative team of some of the country’s best intellectual property law firms and professionals strategically working together to achieve quality results for our country. Click here to find out more about the IPLegalNetwork.
– 2013.09.08 –
Welcome to Judith Rosenblum
On September 1, 2013, Judith joined our team. Judi’s legal experience includes both litigation and transactional matters. Her current work concentrates on assisting both national and international clients with the creation, development, protection, license, and sale of their intellectual property (excluding patent issues). Judi adds experience in intellectual property to the firm and is a welcome addition to the team.
– 2013.09.04 –
CLE Presentation from Rick Holzer
On August 27, 2013 Rick gave a CLE Presentation entitled “The Nuts & Bolts of Intellectual Property Practice: Practical Patent Practice”, where he provided a foundation and practical approach to the practice of patent law. Click here to find out more.
– 2013.09.04 –
Welcome to Shelby Pruitt
On August 21, 2013 Shelby Pruitt joined our team. Shelby recently moved to Denver from Michigan after graduating from Western Michigan University as an Interpersonal Communications major, with a minor in Psychology. As a File Clerk and Receptionist, Shelby is responsible for all manner of tasks in the office from maintaining databases and filing systems to organizing and completing individual projects on a day-to-day basis.
– 2013.08.23 –
Bill Vobach – New member of the board for the Colorado IP American Inn of Court
Bill was recently elected as a member of the board for the Colorado IP American Inn of Court which is part of the Linn Inn Alliance, an organization of Inns focused on intellectual property law. The Colorado IP Inn of Court works to promote professionalism, ethics, civility and legal skills in IP law as well as mentors young IP lawyers in the complexities of IP law.
– 2013.08.19 –
Rick Holzer becomes an IP Star
In August 2013, Rick was named an IP Star in the Managing Intellectual Property Handbook, which lists the top IP Lawyers in the United States. Click here to see Rick on the list of IP Stars.
– 2013.08.19 –
Welcome to Tera Smith
On September 4, 2012, Tera Smith joined our team. Tera’s practice emphasizes patent preparation and prosecution. Her technical areas include data storage systems and devices, semiconductor devices, telecommunications, electronics, mechanical devices, and Internet-based technology. Tera’s addition to the firm has expanded our bandwidth and has brought in a strong background in solar and high-energy physics.
– 2013.08.19 –
Welcome to Lynsey Johnson
In March 2013, Lynsey Johnson joined our team. As a Patent Illustrator, Lynsey uses her illustration and design skills to create the technical patent illustrations for our client’s filing patents. Prior to working for HolzerIPLaw, Lynsey attended the Art Center College of Design in Pasadena, CA where she studied Illustration Design.
– 2013.08.23 –
Welcome to Bill Vobach
On July 2, 2012, Bill Vobach joined our team. Bill is an experienced patent attorney with a B.S. in Electrical Engineering from Washington University and a J.D. from the University of Denver. Bill has a complete intellectual property office practice, and he focuses on patent preparation, prosecution, and counseling. Bill is a great addition, expanding our bandwidth and adding his energy and experience to our excellent group of attorneys and staff members.
– 2012.07.09 –
Welcome to Cathi VanFleet
On June 11, 2012, Cathi VanFleet joined us as our office administrator. Cathi returns to Colorado after several years at the New Mexico Institute of Mining and Technology in Soccoro, NM. We are all excited to have someone focused on minding the store while the rest of us are focused on our clients’ legal needs.
– 2012.07.09 –
Presentation by Rick Holzer
On July 7, 2012, Rick gave a 90 minute presentation on IP Portfolio Management to the Business Law class that his friend, Charlie Knight, teaches in the University of Denver MBA program. The class of about 35 bright students asked so many great questions that the 60 minute presentation went on for another half hour. (It took only 30 minutes before a question about Patent Trolls was raised!) 🙂
– 2012.07.09 –
Article by Chirag Patel
In recent years, private equity has become an important vehicle for investments in companies. Recently Chirag Patel reviewed an article published in the Journal of Private Equity (February 2012) that discusses how private equity firms create value for their investors and submitted an Abstract to the CFA Digest. The link to the Abstract can be found here. You must be a member of the CFA Institute to review the full Abstract.
– 2012.03.31 –
Book Review by Chirag Patel
In less than a couple of years after its introduction, Apple’s iPad has found widespread use among lawyers. Recently, Chirag Patel reviewed “iPad in One Hour for Lawyers” by Tom Mighell. Here is a link to the review, published in the March 2012 issue of The Colorado Lawyer. (You must be a CBA member to view this article.)
– 2012.03.11 –
As of February 1, 2012, we are in our new office in downtown Denver on the 16th Street Mall.
Our new address is:
216 16th Street, Suite 1350
Denver, CO 80202
Please stop by and see our new digs!
– 2012.02.01 –