Jun 24, 2021

U.S. v. Arthrex Case Creates a New Path to Challenge IPR Decisions

As a result of yesterday’s Supreme Court’s decision in U.S. v. Arthrex, any party dissatisfied with the result of an Inter Partes Review (IPR) can now seek review by the Director of the Patent and Trademark Office (PTO). Previously, and as codified by the America Invents Act (AIA), IPR decisions were appealed directly to the U.S. Court of Appeals for the Federal Circuit, with no possible review at the PTO.  Yet to be determined will be the details of how this extra appeal step is to be implemented.   And will, for example, the Director really have time, resources and responsibility for reviewing… Read more


Jun 17, 2021

Dr. Judy de León Jarecki-Black Joins SGR IP Dept. to Lead Biotech/Chemistry Patent Team

Chemistry

Smith, Gambrell & Russell, LLP (SGR) is pleased to announce that Dr. Judy de León Jarecki-Black has joined the firm’s Intellectual Property (IP) Department, to lead the firm’s significant and growing Biotech/Chemistry Patent Team. Dr. Jarecki-Black is a seasoned and accomplished patent and IP attorney, with more than twenty years of experience, including in both private and corporate practice. Prior to joining the firm, Dr. Jarecki-Black was the Global Head of IP for Merial Limited (now Boehringer-Ingelheim Animal Health), a leading global animal health biotech and pharmaceutical company, for 18 years. While at Merial, Dr. Jarecki-Black was responsible for developing and implementing… Read more


Dec 4, 2020

SGR Welcomes Dr. Sharon Ngwenya

SGR is pleased to announce that Dr. Sharon Ngwenya has joined our Firm as a Patent Science Advisor in the Intellectual Property Practice. Dr. Sharon Ngwenya is a Patent Science Advisor based in SGR’s Atlanta office. She has extensive experience in identifying, evaluating, and developing IP protection strategies, and marketing and licensing intellectual property assets. With a background in scientific research, Dr. Ngwenya also has experience drafting and pursuing patent applications in the US and worldwide, and drafting and negotiating commercial agreements of various kinds. Prior to joining the firm, Dr. Ngwenya worked for the University of Texas at Arlington, where… Read more


Nov 17, 2020

SGR’s Intellectual Property Practice Ranked in U.S. News – Best Lawyers as “Best Law Firm”

SGR is proud to announce that the Firm’s Intellectual Property Practice has again been named to the 2021 “Best Law Firms” list by U.S. News – Best Lawyers, ranked nationally and in Atlanta, Washington D.C., and Jacksonville. National Patent Law Biotechnology Law Trademark Law Litigation – Intellectual Property   Washington, D.C. Biotechnology Law   Atlanta Litigation – Intellectual Property Patent Law Litigation – Patent Trademark Law   Jacksonville Litigation – Intellectual Property For a full listing of SGR’s practice groups that have been ranked, click here


Sep 24, 2020

Welcome to the SGR Intellectual Property Department

Dr. Ram Sabnis – Atlanta | Patent Agent Ram Sabnis is a registered patent agent, with a Ph.D. in organic chemistry. Prior to joining SGR, he worked as a patent agent drafting and prosecuting patent applications in-house for Georgia-Pacific LLC and Pfizer Inc., as well as at a major law firm. Before becoming a patent agent, he worked as a scientist for 16+ years, and has also authored 200+ publications.  Bio   Anca Marcu – Washington, D.C. | Associate Anca concentrates her practice on trademark and copyright matters, including counseling, prosecution, enforcement, and portfolio management. Prior to joining SGR, Anca most… Read more


Jul 10, 2020

Singing About Brands: Expressing Emotions in Song

Music Branding

Music is a demanding form of expression. For an artist to communicate through lyrics in a song, the artist must conform his or her ideas within a time signature and in rhythm. When artists are limited in the number of syllables to express an idea or tell a story, they need to find shorthand ways to communicate. For many artists, they find the shorthand that they need to convey ideas, evoke emotions, and connect with their audiences in brands. For example, in 1966, Wilson Pickett told us he bought his paramour Sally a new 1965 Ford Mustang. Mr. Pickett’s audience… Read more


Apr 27, 2020

Supreme Court Holds that Annotations Written by Legislative Body are not Copyrightable

copyright shield on a blue background

On April 27, 2020, the Supreme Court held in a 5-4 split decision that explanatory legal materials created by a legislative body cannot be protected by copyright.   The background facts of this case are discussed in the January 29, 2020 article Can the State of Georgia Own a Copyright in its Official Code? by Elizabeth Borland. In Georgia v. Public.Resource,Org, Inc., Case No. 18-1150 (April 27, 2020), Chief Justice Roberts delivered the opinion for the Court and was joined by Justices Kagan, Sotomayor, Gorsuch and Kavanaugh to form an unusual majority.  The Court first determined that the case was controlled… Read more


Apr 23, 2020

Supreme Court Overturns Second Circuit Precedent, Holds Willful Infringement Unnecessary for Award of Profits in Trademark Infringement Case

Supreme Court and Lady Justice

April 23, 2020, Washington, D.C.  The Supreme Court today held that a plaintiff need not prove that a defendant acted “willfully” in order to recover profits as an equitable remedy for trademark infringement under Section 35(a) of the Federal Trademark Act of 1946, as amended (the “Lanham Act”), 15 U.S.C. § 1117(a).  Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233, — S.Ct. —-, 2020 WL 1942012 (April 23, 2020). The plaintiff, a designer of fasteners used in handbags, brought an action against a handbag manufacturer alleging infringement of its “ROMAG” trademark.  A jury found the manufacturer liable for patent and… Read more


Apr 23, 2020

Musicians’ Class Actions Play On

Gavel with Headphones

In the midst of this global pandemic—as many musicians (like so many others) are struggling to make ends meet—courts in New York have continued to issue important decisions that impact musicians’ livelihoods.  Within the last month, the Southern District of New York permitted two separate class actions against Sony Music Entertainment, Inc. (“Sony”) and Universal Music Group (“UMG”), respectively, to proceed.  The class actions, styled Johansen v. Sony Music Entertainment, Inc. and Waite v. UMG Recordings, Inc. were brought by musicians and songwriters David Johansen, John Lyon (a.k.a Southside Johnny), Paul Colins (from Paul Collins’ Beat), John Waite, Joe Ely,… Read more


Apr 1, 2020

Update on USPTO and U.S. Copyright Office Extensions and Adjustments

photo of Intellectual Property Blocks

On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), which provides, in part, the United States Patent and Trademark Office (USPTO) with the authority during the current emergency to “toll, waive, adjust, or modify any timing deadline established,” in the Patent Act, Trademark Act, and the Copyright Act, including regulations implementing timing deadlines. Before taking such action, the USPTO must determine that the COVID-19 emergency “(1) materially affects the functioning of the patent and trademark office; (2) prejudices the rights of applicants, registrants, patent owners, or others appearing before the office; or… Read more