{"id":147786,"date":"2026-09-09T11:09:22","date_gmt":"2026-09-09T11:09:22","guid":{"rendered":"https:\/\/my.legal500.com\/guides\/?post_type=comparative_guide&#038;p=147786"},"modified":"2026-09-09T11:09:22","modified_gmt":"2026-09-09T11:09:22","slug":"united-states-intellectual-property","status":"publish","type":"comparative_guide","link":"https:\/\/my.legal500.com\/guides\/chapter\/united-states-intellectual-property\/","title":{"rendered":"United States: Intellectual Property"},"content":{"rendered":"","protected":false},"template":"","class_list":["post-147786","comparative_guide","type-comparative_guide","status-publish","hentry","guides-intellectual-property","jurisdictions-united-states"],"acf":[],"appp":{"post_list":{"below_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Bochner Law<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2026\/08\/Bochner-Logo-10.jpg\"\/><\/span><\/div>"},"post_detail":{"above_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Bochner Law<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2026\/08\/Bochner-Logo-10.jpg\"\/><\/span><\/div>","below_title":"<span class=\"guide-intro\">This country specific Q&amp;A provides an overview of Intellectual Property laws and regulations applicable in United States<\/span><div class=\"guide-content\"><div class=\"filter\">\r\n\r\n\t\t\t\t<input type=\"text\" placeholder=\"Search questions and answers...\" class=\"filter-container__search-field\">\r\n\t\t\t<\/div>\r\n\r\n\t\t\t\r\n\r\n\r\n\t\t\t<ol class=\"custom-counter\">\r\n\r\n\t\t\t\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and\/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and\/or know-how).<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><strong>(a) Inventions<\/strong><\/p>\n<p>Two systems protect inventions in the United States, and the choice between them is a business decision as much as a legal one.<\/p>\n<p><em>Patents.<\/em> The United States Patent and Trademark Office (\u201cUSPTO\u201d) grants three kinds of patent. Utility patents (35 U.S.C. \u00a7 101) protect new, useful and non-obvious processes, machines, articles of manufacture and compositions of matter, together with improvements to them. Design patents (35 U.S.C. \u00a7 171) protect new, original and ornamental designs for an article of manufacture; these are frequently undervalued outside the United States and are among the most cost-effective rights available to consumer products, medical device and hardware companies. Plant patents (35 U.S.C. \u00a7 161) protect distinct and new varieties of asexually reproduced plants.<\/p>\n<p>The United States has no supplementary protection certificate. The functional equivalents are patent term extension under 35 U.S.C. \u00a7 156, which restores term lost to FDA or other pre-market regulatory review, and patent term adjustment under 35 U.S.C. \u00a7 154(b), which compensates for USPTO examination delay. For life sciences and medical device companies, these mechanisms are often worth more in commercial terms than any single prosecution decision made during examination.<\/p>\n<p><em>Trade secrets, confidential information and know-how.<\/em> The Defend Trade Secrets Act, 18 U.S.C. \u00a7 1836, provides a federal private cause of action for misappropriation connected to interstate or foreign commerce, and it sits alongside rather than displacing state law. Nearly every state has adopted a version of the Uniform Trade Secrets Act, though a small number still apply common law principles, so the governing standard depends on where the claim is brought. Protection requires that the information derive independent economic value from not being generally known and that the owner take reasonable measures to keep it secret. Contractual and fiduciary claims fill the remaining gaps.<\/p>\n<p>The patent-or-secret election deserves more attention than it usually gets. Where infringement would be detectable in a shipped product, as with most consumer goods and medical devices, patenting is generally the better answer. Where the advantage sits in a manufacturing process, a training pipeline, or a model architecture that a competitor cannot inspect, trade secret protection can outlast any patent term. Companies building on machine learning increasingly run both strategies in parallel across a single technology stack, and the allocation decision is best made before the first application is drafted rather than after.<\/p>\n<p><strong>(b) Brands<\/strong><\/p>\n<p>Brand rights arise from federal statute, state statute and common law simultaneously.<\/p>\n<ul>\n<li><strong>Trademarks and service marks.<\/strong> Federal registration under the Lanham Act, 15 U.S.C. \u00a7 1051 et seq., confers nationwide constructive priority, a presumption of validity, and access to the federal courts. Common law rights vest automatically on use of a distinctive mark in commerce, but are limited to the geographic area of actual use and reputation. Every state also maintains its own registration system, which is inexpensive and occasionally useful for a business operating in a single state, though it confers materially narrower rights<\/li>\n<li><strong>Collective and certification marks<\/strong> are recognized under 15 U.S.C. \u00a7 1054. Certification marks verify origin, quality, materials or method of production. Collective marks identify membership of an association.<\/li>\n<\/ul>\n<ul>\n<li><strong>Trade dress<\/strong> protects the overall look and feel of a product or its packaging, provided it is distinctive and non-functional. For consumer goods companies this is frequently the most valuable brand asset in the portfolio and the least well documented, since it is often never registered and its scope is defined only when a dispute arises.<\/li>\n<\/ul>\n<ul>\n<li><strong>Unfair competition and passing off.<\/strong> Section 43(a) of the Lanham Act, 15 U.S.C. \u00a7 1125(a), reaches false designation of origin and false advertising, and protects unregistered marks and trade dress. State common law adds claims for palming off and misappropriation, and most states have consumer protection statutes addressing deceptive practices.<\/li>\n<\/ul>\n<ul>\n<li>Federal dilution protection under 15 U.S.C. \u00a7 1125(c) is available to famous marks against blurring and tarnishment, without any need to show competition or confusion. Most states maintain parallel anti-dilution statutes with a lower fame threshold.<\/li>\n<\/ul>\n<ul>\n<li><strong>Geographical indications and hallmarks.<\/strong> There is no sui generis GI system comparable to the European regime. Regional designations are protected through certification marks, collective marks and unfair competition law. This is a recurring source of friction for European food, beverage and luxury goods clients entering the US market, and it needs to be planned for at the point of market entry rather than discovered at the point of dispute. Hallmarking is addressed by specific statutes including the National Gold and Silver Stamping Act, 15 U.S.C. \u00a7 291.<\/li>\n<\/ul>\n<p><strong>(c) Other creations, technology and proprietary interests<\/strong><\/p>\n<ul>\n<li><strong>Copyright<\/strong> (Title 17) protects original works of authorship fixed in a tangible medium, including software source code, literary, musical, pictorial, graphic and architectural works.<\/li>\n<li><strong>Design rights.<\/strong> There is no general unregistered design right. Designs are protected through design patents, through copyright where aesthetic elements are separable from utilitarian function, and through trade dress.<\/li>\n<\/ul>\n<ul>\n<li><strong>Semiconductor topographies.<\/strong> The Semiconductor Chip Protection Act, 17 U.S.C. \u00a7 901 et seq., provides sui generis protection for mask works.<\/li>\n<\/ul>\n<ul>\n<li><strong>Plant varieties.<\/strong> Plant patents cover asexually reproduced varieties. The Plant Variety Protection Act, 7 U.S.C. \u00a7 2321 et seq., provides certificate-based protection for sexually reproduced and tuber-propagated varieties.<\/li>\n<\/ul>\n<ul>\n<li><strong>Database rights.<\/strong> There is no sui generis database right. A compilation is protected by copyright only to the extent of original selection, coordination or arrangement, and bare factual compilations are unprotected. Unauthorized extraction may nonetheless be actionable as breach of contract, trade secret misappropriation, or common law misappropriation. Data-centric businesses should assume the contract and access-control layers are doing most of the protective work.<\/li>\n<\/ul>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>&nbsp;<\/p>\n<table>\n<thead>\n<tr>\n<td><strong>Right <\/strong><\/td>\n<td><strong>Duration <\/strong><\/td>\n<\/tr>\n<\/thead>\n<tbody>\n<tr>\n<td>Utility patent<\/td>\n<td>20 years from the earliest effective non-provisional filing date, subject to patent term adjustment and patent term extension<\/td>\n<\/tr>\n<tr>\n<td>Design patent<\/td>\n<td>15 years from issuance for applications filed on or after 13 May 2015; 14 years for earlier filings<\/td>\n<\/tr>\n<tr>\n<td>Plant patent<\/td>\n<td>20 years from filing<\/td>\n<\/tr>\n<tr>\n<td>Plant variety certificate<\/td>\n<td>20 years from issuance, 25 years for trees and vines<\/td>\n<\/tr>\n<tr>\n<td>Trademark<\/td>\n<td>Renewable indefinitely in 10-year terms while used in commerce<\/td>\n<\/tr>\n<tr>\n<td>Copyright<\/td>\n<td>Life of the author plus 70 years; for works made for hire, 95 years from publication or 120 years from creation, whichever is shorter<\/td>\n<\/tr>\n<tr>\n<td>Trade secret<\/td>\n<td>Indefinite while secrecy and economic value are maintained<\/td>\n<\/tr>\n<tr>\n<td>Mask work<\/td>\n<td>10 years from registration or first commercial exploitation anywhere in the world, whichever is earlier<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n<p><em>Patents.<\/em> Term is extended by patent term adjustment for USPTO delay and patent term extension for regulatory review, and it is shortened by terminal disclaimer where one is filed to overcome obviousness-type double patenting. Terminal disclaimers are routinely accepted during prosecution with little analysis, and the cumulative effect on a continuation-heavy family can be to surrender years of exclusivity at the most valuable end of the term. Utility patents require maintenance fees at 3.5, 7.5 and 11.5 years from grant. Design and plant patents require none.<\/p>\n<p><em>Trademarks.<\/em> Federal registrations run for 10 years and renew indefinitely. A Section 8 declaration of use is due between the fifth and sixth years, and a combined Section 8 and Section 9 filing between the ninth and tenth years and each decade thereafter. A Section 15 declaration filed after five years of continuous post-registration use secures incontestable status, which materially narrows the grounds on which the registration can later be attacked. Filing it is cheap and it is the single best-value docket item in a brand portfolio.<\/p>\n<p><em>Copyright.<\/em> Terms are fixed under the 1976 Act. No renewal or extension mechanism exists for works created under current law.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> Inventorship vests in natural persons, and the inventor is the first owner regardless of employment status. There is no automatic transfer to the employer by operation of law. Ownership passes only by written assignment, and courts distinguish sharply between a present assignment and a mere promise to assign in the future. Where no assignment exists, an employer that contributed resources may hold a shop right, being an irrevocable, non-exclusive, royalty-free license to use the invention in its own operations.<\/p>\n<p>The practical consequences are severe and they surface late. Chain-of-title defects are among the most common material findings in venture financings and acquisitions, and they are almost always cheaper to prevent than to cure. Recurring failure modes include founders who incorporated after the invention date, contractors and consultants engaged without invention assignment language, academic collaborators subject to institutional policies that assign to the university, and international engineering teams whose local employment law overrides the assumptions in a US-form agreement.<\/p>\n<p>The status of AI-assisted invention is now a live diligence question rather than an academic one. US law requires that each inventor be a natural person, and the USPTO has issued guidance addressing how significant human contribution is assessed where AI tools are used in conception. Companies deploying generative tools in R&amp;D should be recording human contribution contemporaneously, since reconstructing it years later during litigation is a poor substitute.<\/p>\n<p><em>Copyright.<\/em> Ownership vests initially in the author. Under the work made for hire doctrine, 17 U.S.C. \u00a7 201(b), the employer is treated as author for works created by an employee within the scope of employment. For independent contractors the doctrine applies only where the work falls within one of nine enumerated statutory categories and the parties have executed a written work made for hire agreement. Software does not fit comfortably within those categories, so an express written assignment from every contributing contractor remains essential. A commissioning party that relies on work made for hire language alone, without an assignment fallback, may own nothing.<\/p>\n<p><em>Trademarks.<\/em> Ownership follows priority of use in commerce, or the filing of a bona fide intent-to-use application. The owner is the party that controls the nature and quality of the goods or services, which is not always the entity whose name appears on the application. Group companies routinely file in the wrong entity.<\/p>\n<p><em>Trade secrets.<\/em> Rights belong to the party that controls the information and maintains the measures protecting it, subject to employment agreements, corporate opportunity principles and confidentiality obligations.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Which of the intellectual property rights described in section A are registered rights?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Utility, design and plant patents are granted by the USPTO. Trademarks may be registered federally with the USPTO or at state level, though enforceable rights exist without registration. Copyright arises on fixation, and registration with the Copyright Office is voluntary but is a statutory precondition to bringing an infringement action and to recovering statutory damages and attorneys&#8217; fees. Mask works are registered with the Copyright Office. Plant variety certificates are issued by the Plant Variety Protection Office of the US Department of Agriculture.<\/p>\n<p>Trade secrets, confidential information, common law trademarks and unfair competition rights are unregistered.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> An application must name the actual inventors, and may be filed by the inventors or by an assignee. Applications are filed electronically through Patent Center with a specification, claims, abstract and drawings. A provisional application secures a priority date for 12 months without examination and without claims. Substantive examination follows, addressing eligibility, utility, novelty under \u00a7 102, non-obviousness under \u00a7 103 and the disclosure requirements of \u00a7 112. The examiner issues Office actions; the applicant responds with argument, amendment or both; and on allowance the applicant pays the issue fee.<\/p>\n<p>A significant change took effect on 20 July 2026. Under a final rule published at 91 Fed. Reg. 13510 on 20 March 2026, amending 37 C.F.R. \u00a7\u00a7 1.9, 1.31, 1.32 and 1.33, applicants, inventors and owners domiciled outside the United States must now be represented before the USPTO by a registered practitioner. This aligns patent practice with the representation requirement that has applied on the trademark side for several years, and it removes the pro se route that some foreign applicants previously used to reduce cost. Foreign-origin filers who had been managing US matters directly should confirm that representation is in place across pending matters rather than waiting for the point at which action is required.<\/p>\n<p>The provisional filing is the decision point most often handled badly. Treated as a cheap placeholder, it fails to support the claims eventually pursued and the priority date evaporates when it is needed most. Treated properly, it is the mechanism that lets a company file before a trade show, a funding round or a customer demonstration without committing to a claim strategy prematurely. Foreign-origin applicants should also plan the US leg deliberately rather than defaulting to a translated national phase entry, since claim practice, restriction practice and continuation strategy differ enough from European and Asian norms to affect the commercial value of the result.<\/p>\n<p><em>Trademarks.<\/em> Any person or entity using a mark in commerce, or with a bona fide intent to use it, may apply. Foreign-domiciled applicants must be represented by a US-licensed attorney. Applications are filed electronically, designating classes of goods and services. An examining attorney reviews registrability and conflicts. Approved marks publish in the Official Gazette for a 30-day opposition period, and intent-to-use applications register on acceptance of a statement of use. Clearance before filing is the highest-return step in the process and the one most often skipped by companies launching on a compressed timeline.<\/p>\n<p><em>Copyrights.<\/em> The author, the copyright claimant, an owner of exclusive rights, or an authorized agent may apply through the electronic system, paying the fee and depositing the required copies. The Office reviews for copyrightable subject matter without prior art searching.<\/p>\n<p><em>Mask works.<\/em> Registration must be made within two years of first commercial exploitation, failing which protection is lost.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How long does the registration procedure usually take?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> Traditional total pendency, measured from filing to issuance or abandonment, currently runs at approximately 29.3 months. Including applications in which a request for continued examination was filed, total pendency rises to approximately 33.6 months. Average pendency to a first Office action is approximately 20.8 months. These are averages across all technology centers, and the spread around them is wide. Software and biotechnology art units generally run slower than mechanical ones, and an applicant in a congested art unit should plan on the upper end of the range.<\/p>\n<p>Track One prioritized examination compresses this substantially. Measured from grant of the petition to final disposition, Track One cases currently reach disposition in approximately 5.0 months. That difference is worth its cost where a granted patent is needed to support a financing, a licensing negotiation, an acquisition or an enforcement threat on a defined timeline. It is wasted money where none of those pressures exist and the applicant would be equally well served by a pending application. Design patents typically issue in 12 to 24 months.<\/p>\n<p><em>Trademarks.<\/em> Total pendency currently runs at approximately 9.8 months, against a USPTO target of 14 months for the fiscal year. First action pendency is running at approximately 92 days against a 90-day target. Trademark timelines are therefore both faster and more predictable than patent timelines, which matters to a company sequencing a product launch around secured rights.<\/p>\n<p><em>Copyrights.<\/em> Registration averages a few months for straightforward electronic filings. Special handling is available for an additional fee where litigation, customs enforcement or a contract deadline requires expedited treatment, and it typically produces a certificate within days.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Do third parties have the right to take part in or comment on the registration process?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> Under 35 U.S.C. \u00a7 122(e) any third party may submit patents, published applications or printed publications of potential relevance, with a concise description of relevance. The window closes at the later of six months after publication or the first Office action rejecting a claim, and in any event before allowance. A third party may also file a protest on any ground adverse to patentability, including public use, on-sale activity and inventorship, generally before publication or allowance. Post-grant challenge is addressed at Questions 27 to 29.<\/p>\n<p><em>Trademarks.<\/em> A party who believes it would be damaged may oppose within 30 days of publication, extendable up to 180 days. Before publication, a letter of protest may be submitted with objective evidence bearing on registrability. After registration, a cancellation petition may be filed with the Trademark Trial and Appeal Board.<\/p>\n<p><em>Copyrights.<\/em> There is no third-party opposition procedure. Validity is tested only in litigation or before the Copyright Claims Board.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What (if any) steps can the applicant take if registration is refused?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> The applicant responds to a non-final rejection with argument and amendment. After a final rejection the options are further argument or amendment, a request for continued examination, an appeal to the Patent Trial and Appeal Board (&#8220;PTAB&#8221;), a continuation application with a revised claim set, or abandonment. PTAB decisions may be appealed to the Court of Appeals for the Federal Circuit or challenged by civil action in district court.<\/p>\n<p>Choosing among these is a cost and timing question rather than a purely legal one. Appeals are slower but cheaper and place the question before a different decision-maker; continuations preserve the family and buy time to see how the market develops; requests for continued examination are fast but recurring, and the fee structure is now tiered so that repeat filings cost materially more than the first. A client with a live financing or a competitor in the market usually needs a different answer from one with a long product runway.<\/p>\n<p><em>Trademarks.<\/em> The applicant may respond to the Office action, request reconsideration after a final action, and appeal to the Trademark Trial and Appeal Board, with onward review at the Federal Circuit or by de novo civil action in district court.<\/p>\n<p><em>Copyrights.<\/em> The applicant may file a first request for reconsideration and then a second request before the Review Board. A final refusal may be challenged in district court.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the current application and renewal fees for each of these intellectual property rights?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Figures below reflect the USPTO fee schedule effective 19 January 2025 as last revised on 1 August 2026, and the Copyright Office schedule in force at the date of writing. Fees are revised periodically and should be confirmed before filing.<\/p>\n<p><em>Patents.<\/em> The basic filing, search and examination fees for a utility application are $350, $770 and $880 respectively, giving a combined figure of $2,000 for a large entity. Small entities pay $800 and micro entities $400 for the same combination, reflecting discounts of 60 percent and 80 percent. The issue fee is $1,290 for a large entity.<\/p>\n<p>Excess claim fees apply above three independent claims, at $600 each, and above 20 total claims, at $200 each. A multiple dependent claim carries a $925 surcharge. Filing a utility application other than in DOCX format attracts a $430 surcharge, which is avoidable and frequently is not avoided.<\/p>\n<p>Maintenance fees for a large entity are $2,150 at 3.5 years, $4,040 at 7.5 years and $8,280 at 11.5 years, with the same small and micro entity reductions.<\/p>\n<p>Several fees reward or penalize prosecution behavior and are worth planning around. Track One prioritized examination costs $4,515 for a large entity, $1,806 for a small entity and $903 for a micro entity. A first request for continued examination costs $1,500; a second and each subsequent request costs $2,860. Information disclosure statements attract volume-based fees of $200, $500 and $800 as cumulative reference counts pass defined thresholds. A benefit claim submitted more than six years after the earliest priority date costs $2,700, rising to $4,000 beyond nine years, so continuation strategies that keep a family alive for a decade or more now carry a direct fee consequence.<\/p>\n<p>Entity status is worth managing deliberately. The discounts are large, the eligibility rules are specific, and an incorrect claim of small or micro entity status can have consequences well beyond the fee saved. Growing companies frequently fail to update status after a financing round.<\/p>\n<p><em>Post-grant proceedings.<\/em> An inter partes review request costs $23,750, with a further $28,125 payable post-institution. A post-grant review request costs $25,000, with a further $34,375 post-institution. Ex parte reexamination costs $6,775 where the streamlined request requirements are met and $13,545 otherwise. A request for Director review costs $452. These are official fees only and are a small fraction of the total cost of the proceedings, addressed at Question 18.<\/p>\n<p><em>Trademarks.<\/em> The base application fee is $350 per class. Three surcharges apply and all three are avoidable. Omitting required information at filing adds $100 per class. Using the free-form text box rather than the pre-approved identification manual adds $200 per class. Each additional 1,000 characters of free-form goods and services text adds a further $200 per class. Drafting from the identification manual avoids all of it and generally produces a cleaner prosecution.<\/p>\n<p>A statement of use for an intent-to-use application costs $150 per class. The Section 8 declaration of continued use is $325 per class and the Section 9 renewal is $325 per class, or $650 per class filed as a combined declaration. A Section 15 declaration of incontestability costs $250 per class. Before the Trademark Trial and Appeal Board, a notice of opposition or a petition to cancel costs $600 per class, and an ex parte appeal costs $225 per class.<\/p>\n<p><em>Copyrights.<\/em> The standard electronic application costs $65. An applicant registering a single work by a single author, where that author is also the claimant and the work was not made for hire, qualifies for the single application at $45. Paper filing costs $125, and there is rarely a reason to use it. Supplementary registration to correct or amplify an existing registration costs $100 electronically. Preregistration of certain classes of unpublished works costs $200. Group registration options materially reduce per-work cost for high-volume creators, ranging from $35 per issue for serials to $85 for a group of unpublished works, and clients producing content at scale should build the applicable category into their release workflow rather than registering work by work. There are no copyright maintenance or renewal fees.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> Non-payment causes the patent to expire and the technology to fall into the public domain. Payment may be made within a six-month grace period on payment of a surcharge. Beyond that, a petition to revive under 37 C.F.R. \u00a7 1.378 may be granted where the delay was unintentional, on payment of the outstanding fee and the petition fee. Intervening rights may accrue to third parties who acted during the lapse, which is a reason to treat annuity management as a legal function rather than a purely administrative one.<\/p>\n<p><em>Trademarks.<\/em> Failure to file the Section 8 declaration or the Section 9 renewal results in cancellation. A six-month grace period with surcharge is available. Once that closes, there is no revival for an owner&#8217;s own failure, and the only route back is a new application, with the loss of the original priority date and any incontestable status. For a consumer brand with a long trading history, that is a genuinely damaging outcome and it is entirely avoidable.<\/p>\n<p><em>Copyrights.<\/em> No renewal or maintenance is required for works created under current law.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the requirements to assign ownership of each of the intellectual property rights described in section A?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> An assignment must be in writing under 35 U.S.C. \u00a7 261, executed by the assignor, and should use present-tense language of conveyance rather than an agreement to assign at a later date. Notarization is not required for validity but provides prima facie evidence of execution. A patentee may not assign fewer than all claims of a patent, though undivided interests and territorial interests may be conveyed.<\/p>\n<p><em>Trademarks.<\/em> An assignment must be in writing, signed by the assignor, and must transfer the goodwill of the business associated with the mark. An assignment in gross, without goodwill, is invalid and may support an abandonment finding. An intent-to-use application cannot be assigned before a statement of use or amendment to allege use is filed, except to a successor to the ongoing business to which the mark pertains. This trips up asset purchases with regularity, and the fix is to sequence the transaction around the trademark filing rather than the other way round.<\/p>\n<p><em>Copyrights.<\/em> A transfer of ownership, other than by operation of law, is invalid unless in writing and signed by the owner of the rights conveyed or an authorized agent, per 17 U.S.C. \u00a7 204(a). Authors and their heirs may terminate transfers after 35 years under the statutory termination provisions, which cannot be waived by contract. Anyone acquiring a long-lived copyright portfolio should diligence the termination exposure explicitly.<\/p>\n<p><em>Trade secrets.<\/em> Assignment is a matter of state contract law, effected by written agreement, asset purchase agreement or invention assignment agreement, and the instrument must preserve the confidentiality obligations on which trade secret status depends.<\/p>\n<p><em>Mask works and plant variety certificates.<\/em> Both require a written instrument signed by the owner.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Recordal is not a condition of validity as between assignor and assignee, but the consequences of failing to record are real.<\/p>\n<p>For patents and federally registered trademarks, an unrecorded assignment is void against a subsequent bona fide purchaser for value without notice, unless recorded within three months of execution or before the subsequent transaction. Unrecorded assignees also face procedural obstacles at the USPTO, including taking action in an application and having the patent issue in the correct name.<\/p>\n<p>For copyrights, recordal with the Copyright Office gives constructive notice where the work is registered, and governs priority between conflicting transfers under 17 U.S.C. \u00a7 205.<\/p>\n<p>There is no registry for trade secret assignments, and the ability to prove ownership rests on the underlying contractual record.<\/p>\n<p>The recurring practical point is that a well-drafted assignment that was never recorded is a diligence finding, and a diligence finding at the wrong moment in a transaction is leverage for the other side. Recordal should be part of the closing checklist, not a follow-up item.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the requirements to licence a third party to use each of the intellectual property rights described in section A?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> Licenses are governed by state contract law. Oral non-exclusive licenses can be enforceable, and implied licenses can arise from conduct, including the shop right an employer acquires where an employee used company resources. Written agreements are the norm and should define the scope of grant across make, use, sell, offer for sale and import, together with territory, field of use, duration, exclusivity and royalty structure. Royalties extending beyond patent expiry raise patent misuse concerns, and multi-patent portfolio licenses need to be structured with that in mind.<\/p>\n<p><em>Trademarks.<\/em> The licensor must retain and actually exercise quality control over the licensee&#8217;s goods or services, per 15 U.S.C. \u00a7 1055. A naked license, meaning one without contractual quality control provisions or without genuine oversight in practice, risks involuntary abandonment of the mark. The agreement should set out inspection rights, quality standards and approval procedures, and the licensor should keep a record of exercising them. Consumer goods companies operating through licensees, distributors and contract manufacturers carry the greatest exposure here, and the failure is usually one of practice rather than drafting.<\/p>\n<p><em>Copyrights.<\/em> An exclusive license transfers an ownership interest and must be in writing and signed. A purported exclusive license without a signed writing takes effect as a non-exclusive license. Non-exclusive licenses may be oral, written or implied by conduct. Grants should specify the rights covered, the media, the territory and the term.<\/p>\n<p><em>Trade secrets.<\/em> Licenses must contain confidentiality, access and use restrictions sufficient to maintain secrecy, since the license itself is a disclosure and a poorly controlled one can destroy the right being licensed.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>No. There is no requirement to record a patent, trademark or copyright license, and recordal is not a condition of validity or enforceability between the parties.<\/p>\n<p>Voluntary recordal is possible. Recording a copyright license provides constructive notice and can establish priority against conflicting transfers under 17 U.S.C. \u00a7 205. Recording a patent or trademark license at the USPTO creates a public record of the encumbrance. An unrecorded exclusive licensee may face a priority dispute against a later good faith purchaser without notice, so exclusive licensees taking a position of real commercial value should consider recording even though nothing compels it.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, and the difference is frequently the reason an enforcement action fails before the merits are reached.<\/p>\n<p><em>Exclusive licensees.<\/em> For patents, a licensee holding all substantial rights may sue in its own name. A licensee holding substantial but lesser exclusive rights, for example within a defined territory or field of use, has standing but must join the patent owner. For trademarks, standing under Section 32(1) of the Lanham Act, 15 U.S.C. \u00a7 1114(1), rests with the registrant, though an exclusive licensee granted all commercial rights is often treated as an assignee, and \u00a7 43(a) affords broader standing to parties likely to be damaged. For copyright, an exclusive licensee of a particular exclusive right is treated as the owner of that right and may sue in its own name for violations occurring during its ownership.<\/p>\n<p><em>Non-exclusive licensees.<\/em> A non-exclusive license operates in substance as a covenant not to sue. The licensee suffers no exclusionary injury, has no standing to sue third parties, and cannot compel the licensor to act. Its only recourse is contractual, through provisions requiring the licensor to police the right or permitting royalty abatement.<\/p>\n<p>Standing is therefore something to engineer at the drafting stage. Where a licensee&#8217;s business depends on excluding competitors, the license needs to be built to deliver standing rather than assumed to confer it, and the licensor needs to understand what it is giving away when it does.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Enforcement in the United States is overwhelmingly civil. Patent infringement carries no criminal liability at all. Criminal sanctions exist for willful trademark counterfeiting, willful copyright infringement and trade secret theft.<\/p>\n<p>Under 18 U.S.C. \u00a7 2320, intentional trafficking in counterfeit goods or services, or in labels and packaging bearing a counterfeit mark, exposes individuals to $2,000,000 and 10 years&#8217; imprisonment and corporations to $5,000,000, with higher ceilings for repeat offenders and for counterfeit military goods, counterfeit drugs and offences risking serious bodily injury. Under 17 U.S.C. \u00a7 506(a) and 18 U.S.C. \u00a7 2319, willful copyright infringement for commercial advantage or private financial gain carries up to five years, and ten for repeat offenders. The Economic Espionage Act reaches trade secret theft, with \u00a7 1832 addressing ordinary commercial theft at up to 10 years and corporate fines to $5,000,000, and \u00a7 1831 addressing theft intended to benefit a foreign government at up to 15 years and corporate fines to $10,000,000 or three times the value of the secret.<\/p>\n<p>A rights holder cannot initiate a criminal prosecution. It can refer a matter to federal law enforcement, typically the FBI or Homeland Security Investigations, and prosecution is brought by the Department of Justice.<\/p>\n<p>The strategic question is when a referral is worth making. Federal prosecutors decline most IP referrals, and a rights holder that has already run a thorough civil investigation, quantified the loss and packaged the evidence has a materially better chance of being taken up than one that simply reports a suspicion. Section 1831 referrals in particular have received sustained government attention, which matters to companies in defense, aerospace, semiconductors and life sciences. A parallel civil action also proceeds on a different timetable and to a lower standard of proof, and the two need to be sequenced deliberately rather than allowed to interfere with each other.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What other enforcement options are available for each of the intellectual property rights described in section A? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Federal district courts.<\/em> The primary venue for patents, copyrights, federally registered trademarks and DTSA trade secret claims. Full remedies are available, including temporary restraining orders, preliminary and permanent injunctions, actual damages, lost profits, reasonable royalties, statutory damages for copyright and counterfeiting, and enhanced damages and fees for willfulness.<\/p>\n<p><em>State courts.<\/em> Available for state trademark claims, trade secret misappropriation under state law, breach of confidentiality agreements, and common law unfair competition. Patent, plant variety and copyright claims are exclusively federal, though state courts routinely decide ownership, assignment and licensing disputes that turn on contract or tort principles.<\/p>\n<p><em>International Trade Commission.<\/em> Section 337 of the Tariff Act of 1930 gives the International Trade Commission (\u201cITC\u201d) authority to investigate unfair acts in importation, including infringement of patents, registered trademarks, copyrights and trade secrets. Relief is exclusively injunctive, in the form of exclusion orders and cease and desist orders enforced by Customs, with no monetary damages available. The ITC is the strongest tool available against overseas manufacturers who are difficult to reach in district court, and the speed of the schedule is itself a form of pressure.<\/p>\n<p><em>Patent Trial and Appeal Board.<\/em> Inter partes review, post-grant review and ex parte reexamination provide administrative routes to test patent validity, addressed further at Questions 27 to 29.<\/p>\n<p><em>Trademark Trial and Appeal Board.<\/em> Oppositions and cancellations determine registrability and the continued validity of registrations, but not infringement or damages.<\/p>\n<p><em>Copyright Claims Board.<\/em> A voluntary small claims tribunal within the Copyright Office, with damages capped at $30,000. Respondents may opt out, which limits its practical value, though it can be a proportionate route for individual creators and small businesses.<\/p>\n<p><em>Online marketplace and platform enforcement.<\/em> For consumer brands this is now the front line, and it sits outside the formal legal system entirely. Marketplace brand registry programs, platform notice-and-takedown procedures, social media enforcement tools and domain dispute mechanisms resolve the overwhelming majority of counterfeit and knock-off problems faster and at a fraction of the cost of litigation. A registered trademark and a recorded copyright are the keys to most of these programs, which is a practical reason for consumer goods companies to register rights they might otherwise leave to common law. Platform enforcement also generates evidence, since repeat listings and seller identity data build the record for a later civil action against the operator behind the storefront.<\/p>\n<p><em>Alternative dispute resolution.<\/em> Mediation and binding arbitration are widely used, whether under a contractual clause or by post-dispute agreement. Arbitration of patent validity and infringement is expressly permitted by statute.<\/p>\n<p>The real question a client faces is rarely whether a forum exists. It is which combination to use and in what order. A patent dispute against an importing competitor might run an ITC investigation for speed and leverage alongside a district court action stayed pending its outcome. A defendant facing assertion might file an inter partes review while contesting the district court case, though as Question 29 explains, that route can no longer be assumed to be available. A brand owner might resolve the overwhelming majority of its counterfeit problem through platform takedowns and reserve litigation for the handful of operators worth suing. Increasingly the sequencing has to account for parallel European proceedings as well, and a US filing decision made without reference to a pending opposition or a Unified Patent Court action can undercut a coordinated global position.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What is the length and cost of such procedures?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Federal district court.<\/em> Time from complaint to trial generally runs one to three years, varying substantially by district.<\/p>\n<p>Cost is the variable clients ask about first and the one most often misestimated. According to the 2025 Report of the Economic Survey published by the American Intellectual Property Law Association, the median total cost of a patent infringement action in 2024, measured through discovery, motions and claim construction, was approximately $250,000 where less than $1 million was at risk, $450,000 where $1 million to $10 million was at risk, $750,000 where $10 million to $25 million was at risk, and $2 million where $25 million or more was at risk. Carrying the same cases through pre-trial, trial, post-trial and appeal roughly doubles those figures, to approximately $450,000, $750,000, $2 million and $3.5 million respectively.<\/p>\n<p>Two features of these numbers deserve emphasis. First, medians across most bands declined from the 2022 survey, which reflects earlier case resolution rather than cheaper lawyering. Second, the gap between the claim construction cut point and the through-appeal cut point is where nearly all of the discretionary spend sits. A party that builds its invalidity and non-infringement record early, and that treats claim construction as the natural settlement inflection point, controls the larger half of its own budget.<\/p>\n<p><em>ITC Section 337 investigations.<\/em> Statutorily expedited. In fiscal year 2025 the Commission completed 28 investigations on the merits, with an average duration of 16.3 months, the shortest at 3.9 months and the longest at 30.8 months. Averaged across all completed investigations, including those terminated by settlement, consent order or withdrawal, the figure was 14.29 months. The fiscal 2025 average was lengthened by tolling associated with the autumn 2025 government shutdown, and the comparable fiscal 2024 figures were 18 months on the merits and 14.9 months across all completed investigations. Discovery is compressed into a period that district court litigation would spread over years, so costs are front-loaded and typically run from $2.5 million upward.<\/p>\n<p><em>Trademark infringement.<\/em>\u00a0Median cost in the lowest exposure band was approximately $100,000 through claim construction and $250,000 through appeal, so a trademark dispute of ordinary value is roughly a quarter the cost of the equivalent patent case.<\/p>\n<p><em>PTAB proceedings.<\/em> Institution is decided within six months of filing, and a final written decision follows within one year of institution, extendable by six months for good cause, though summary discretionary denials frequently issue considerably sooner. Median cost through a PTAB hearing was approximately $300,000 for mechanical subject matter, $355,000 for electrical and computer subject matter, and $500,000 for life sciences subject matter. Post-grant proceedings therefore remain materially cheaper than district court litigation on a per-patent basis, though the sharp rise in discretionary denials described at Question 29 has reduced their reliability as a budgeting assumption.<\/p>\n<p><em>Trademark Trial and Appeal Board (\u201cTTAB\u201d) proceedings.<\/em> Typically 18 to 30 months, with costs generally between $50,000 and $200,000.<\/p>\n<p><em>Copyright Claims Board.<\/em> Six to twelve months, with costs designed to remain low.<\/p>\n<p>Budget predictability matters as much as the absolute numbers, and in-house teams are usually managing to an approved figure rather than to an outcome. Phased budgets tied to defined decision points, early case assessment before the pleading stage, and staffing structured around the actual complexity of the matter make a considerable difference to the total. The largest single cost driver in US litigation is discovery, and the scope of it is more within the parties&#8217; control than most foreign clients assume.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Jurisdiction.<\/em> Federal district courts have exclusive subject matter jurisdiction over patent, plant variety protection and copyright claims under 28 U.S.C. \u00a7 1338, and federal question jurisdiction over Lanham Act and DTSA claims. State courts of general jurisdiction hear state trademark, contract, trade secret and unfair competition claims. Venue in patent cases is constrained by statute and turns on where the defendant resides or has a regular and established place of business, which materially limits forum selection compared with other civil litigation.<\/p>\n<p><em>Starting proceedings.<\/em> The plaintiff files a complaint and serves it. The defendant has 21 days to answer or move to dismiss, extended to 60 days where service is waived. Counterclaims for invalidity and non-infringement are standard in patent cases.<\/p>\n<p><em>Procedure.<\/em> The parties hold an early conference and the court sets a schedule. Discovery follows, comprising document production, interrogatories, requests for admission, and depositions of fact and expert witnesses. Many districts have adopted local patent rules requiring early infringement contentions, invalidity contentions and claim construction exchanges. Claim construction is resolved at a dedicated hearing, generally before the close of expert discovery, and the ruling frequently determines the outcome of the case without a trial. Dispositive motions follow discovery.<\/p>\n<p><em>Trial.<\/em> Either party may demand a jury where damages are sought. Equitable claims are tried to the bench. Trials generally last one to three weeks. The jury returns a verdict at the close of trial, and final judgment follows within weeks or months depending on post-trial motions.<\/p>\n<p><em>Appeals.<\/em> The Federal Circuit has exclusive jurisdiction over appeals in cases arising under the Patent Act, which produces a nationally uniform body of patent law. Trademark, copyright and state law trade secret appeals go to the regional circuit courts of appeals, where the law differs meaningfully between circuits on questions including the likelihood of confusion factors and the scope of fair use. Further review by the Supreme Court is discretionary and rare.<\/p>\n<p>Two features consistently surprise clients coming from civil law systems. The first is the jury. Technical disputes are decided by lay factfinders, which changes how a case must be presented from the first pleading onward and makes narrative discipline as important as technical accuracy. The second is that claim construction happens early and publicly, and a construction adopted in one case follows the patent into every subsequent dispute. Neither is a reason to avoid US litigation. Both are reasons to plan it differently from a European action.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What customs procedures are available to stop the import and\/or export of infringing goods?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Recordation with Customs and Border Protection.<\/em> Owners of federally registered trademarks and registered copyrights may record their rights with CBP through the online recordation system for a modest fee. Recordation is the single highest-return enforcement step available to a consumer products company, and it is routinely overlooked.<\/p>\n<p><em>Border enforcement.<\/em> Once a right is recorded, CBP officers have authority to inspect shipments, detain suspected infringing goods, and seize and destroy counterfeits at ports of entry without a court order. CBP can impose civil penalties on importers. Recorded rights holders can also provide product identification training and guidance to help officers distinguish genuine goods from counterfeits, which measurably improves seizure rates.<\/p>\n<p><em>Patents.<\/em> CBP does not record or independently enforce patents. Blocking patent-infringing imports requires an exclusion order from the ITC under Section 337, which CBP then enforces at the border through its exclusion order enforcement function. Scope disputes about whether a redesigned product falls within an existing exclusion order are themselves a recurring area of practice.<\/p>\n<p><em>Exports.<\/em> There is no equivalent general export enforcement regime for IP rights, though separate export control and sanctions frameworks apply to controlled technology and are a live concern for aerospace, defense and dual-use technology companies. Those regimes operate independently of IP law and impose their own licensing obligations on technical data.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>No mechanism is mandatory as a statutory precondition to filing suit. Three qualifications matter in practice.<\/p>\n<p>Courts frequently compel participation in court-annexed mediation or settlement conferences before a magistrate judge, and many judges require the parties to certify that settlement has been discussed at defined stages. Participation is mandatory even though settlement is not.<\/p>\n<p>A valid arbitration clause in a license, non-disclosure agreement, development contract or joint venture agreement will be enforced under the Federal Arbitration Act, and litigation will be stayed or dismissed in favor of arbitration. This is the most common route by which a party finds itself outside court against its wishes, and it is decided years earlier, at the contract drafting stage. Anyone negotiating a technology agreement should treat the dispute resolution clause as a substantive commercial term rather than boilerplate.<\/p>\n<p>Domain name registration agreements require registrants to submit to administrative proceedings under the Uniform Domain-Name Dispute-Resolution Policy where a trademark owner alleges bad faith registration.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What options are available to settle intellectual property disputes in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Parties may settle at any point, before, during or after litigation, and the great majority of US IP disputes resolve without trial.<\/p>\n<p>Direct negotiation produces settlement agreements, licenses, coexistence agreements and cross-licenses, resolving claims for financial consideration, conduct commitments or both. Private mediation before a neutral, often through an established provider, is widely used and is frequently more effective once claim construction has issued and both sides have a clearer view of risk. Binding arbitration produces an enforceable award, and can be agreed after a dispute has arisen even where no contractual clause exists. In active litigation, the parties can file a stipulated dismissal or ask the court to enter a consent judgment, which incorporates the settlement terms into a court order and allows the court to enforce compliance through its contempt power. A consent judgment is materially stronger than a private settlement agreement where the concern is future compliance by a repeat infringer.<\/p>\n<p>The advice that matters most to a client is usually about timing and about whether to pursue a claim at all. Settlement value shifts sharply around identifiable events, including an institution decision on a post-grant petition, a claim construction ruling, and the exchange of damages reports. A meritorious claim can still be the wrong claim to bring where the cost, the distraction and the risk of a counterclaim or a validity challenge outweigh the recovery. Telling a client not to sue, or not to sue yet, is part of the job.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What is required to establish infringement of each of the intellectual property rights described in section A? What evidence is necessary in this context?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> Direct infringement under 35 U.S.C. \u00a7 271(a) requires that the accused party make, use, offer to sell, sell or import the patented invention in the United States without authority. Under the all-elements rule, the accused product or process must embody every limitation of at least one claim, either literally or under the doctrine of equivalents, where differences are insubstantial. Indirect infringement requires an underlying direct infringement plus either active inducement under \u00a7 271(b) or contributory infringement under \u00a7 271(c). Where the steps of a method claim are performed by more than one actor, divided infringement liability attaches only where the acts of the others are attributable to a single actor.<\/p>\n<p>Evidence typically comprises the patent claims and prosecution history, the claim construction record, expert testimony mapping each limitation against the accused product, teardown and reverse engineering analysis, source code review in software cases, technical documentation obtained in discovery, and financial records for damages. The quality of the infringement analysis performed before the complaint is filed increasingly determines the outcome, since courts scrutinize pre-suit investigation and fee exposure for inadequate cases is real.<\/p>\n<p><em>Trademarks.<\/em> The owner must show a valid mark, priority of use, and that the defendant&#8217;s unauthorized use in commerce is likely to cause confusion as to source, sponsorship or affiliation. Every circuit applies a multi-factor test, and while the factors are broadly similar, the formulations and their relative weight differ, which is one reason forum matters more in trademark cases than practitioners outside the United States tend to expect. Trade dress claims carry the additional burden of establishing non-functionality and, for product configuration, acquired distinctiveness. Evidence includes registration certificates and use records, side-by-side comparisons, product and packaging samples, consumer survey evidence, instances of actual confusion, marketing and channel evidence, and internal documents bearing on intent.<\/p>\n<p><em>Copyrights.<\/em> The owner must show ownership of a valid copyright and unauthorized copying of protected expression. Direct evidence of copying is rare, so copying is generally inferred from access plus substantial similarity of protected expression. Software cases require filtering out unprotectable elements, including ideas, functional requirements and material dictated by external constraints, before comparing what remains. Evidence includes registration certificates, records establishing creation dates and authorship, access evidence such as distribution history and access logs, source code comparison, and expert analysis.<\/p>\n<p><em>Trade secrets.<\/em> The claimant must show that the information qualifies as a trade secret, meaning it derives independent economic value from secrecy and was the subject of reasonable protective measures, and that the defendant acquired, used or disclosed it by improper means. Evidence includes confidentiality agreements, access control and security records, technical specifications identifying the secret with adequate particularity, forensic evidence of exfiltration such as download logs and external device activity, departure records and communications, and evidence of use by the defendant. Identifying the trade secret with sufficient particularity is the threshold hurdle in most cases, and claimants who plead a category of information rather than a defined secret often lose before reaching the merits.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and\/or parties\u2019 expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><strong>(a) Technical judges, court-appointed experts and party experts<\/strong><\/p>\n<p>There are no designated technical judges. Federal district judges are generalists, though some sit in districts with heavy patent dockets and acquire substantial familiarity, and several districts have operated programs concentrating patent cases among a subset of judges. All Federal Circuit judges have extensive patent experience by virtue of that court&#8217;s exclusive jurisdiction, and many have technical backgrounds.<\/p>\n<p>Party-appointed experts are the norm and the dominant means by which technical information reaches the factfinder. Each side retains, pays and presents its own experts on infringement, validity, damages and, where relevant, industry practice. Courts may appoint a neutral expert under Federal Rule of Evidence 706, and may appoint a special master under Federal Rule of Civil Procedure 53 to manage complex technical issues or discovery disputes, but both remain uncommon. Some judges request a joint technology tutorial before claim construction, which is an underused opportunity to frame the technology on favorable terms.<\/p>\n<p><strong>(b) Compelling and protecting evidence<\/strong><\/p>\n<p>Discovery in US litigation is broader than in any comparable system, and this is the feature that most often catches foreign parties unprepared. Parties may compel production of relevant non-privileged documents, electronic data, source code and physical samples, serve interrogatories and requests for admission, and take oral depositions of parties and, by subpoena, of non-parties. Initial disclosures identifying key witnesses, document categories and damages computations are required early. A party resisting production may assert privilege, work product protection or common interest protection, and the requesting party may move to compel.<\/p>\n<p>Preservation obligations attach at the point litigation becomes reasonably foreseeable, not at the point it is filed. Litigation holds must be issued and enforced, and failure to preserve evidence can result in adverse inference instructions or terminating sanctions that dwarf the merits of the case. Companies with document retention policies calibrated to European norms, and those whose engineering teams communicate through ephemeral messaging tools, carry real exposure and should address it before a dispute arises rather than after.<\/p>\n<p>Protective orders are entered as a matter of course and typically establish tiered confidentiality designations, including an attorneys&#8217; eyes only tier restricting access to outside counsel and retained experts. Source code is generally produced for inspection on a secured standalone computer under stringent conditions. Cross-border discovery raises further complications where foreign data protection law restricts transfer, and those conflicts are better identified at the outset of a case than litigated mid-schedule.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Scrutiny is adversarial and is exercised primarily through cross-examination, which is available as of right and is used in effectively every trial. It also features in pre-trial evidentiary hearings, including preliminary injunction hearings and, in some courts, claim construction hearings. Depositions taken during discovery serve a related function, locking witnesses into positions and generating material for impeachment at trial.<\/p>\n<p>Expert evidence is separately filtered by the trial judge acting as gatekeeper under Federal Rule of Evidence 702 and the associated framework governing reliability. The court assesses whether the expert&#8217;s methodology is reliable and has been properly applied to the facts of the case, and motions to exclude or limit expert testimony are filed as a matter of routine in IP cases. Damages experts in patent cases attract particularly close scrutiny, and exclusion of a damages theory shortly before trial can transform the settlement posture of a case overnight.<\/p>\n<p>Documentary evidence must satisfy the rules on relevance, authentication and hearsay, subject to established exceptions including the business records exception. Parties file motions in limine before trial to exclude prejudicial or inadmissible material, and the rulings on those motions shape what the jury ultimately sees.<\/p>\n<p>The cumulative effect is that a US case is won or lost substantially before trial, through the discovery record, the claim construction ruling, the expert reports and the pre-trial motions. Preparing on that basis from the first month of a matter, rather than treating trial as the moment the case is presented, is the difference between managing a US dispute and being managed by it.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What defences to infringement are available?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em><\/p>\n<ul>\n<li><strong>Non-infringement<\/strong>, established by showing that the accused product or process lacks at least one claim limitation, literally and under the doctrine of equivalents. Prosecution history estoppel bars equivalents surrendered by amendment or argument during prosecution, which is why the record built during examination matters long after grant.<\/li>\n<li><strong>Invalidity<\/strong>, on the ground that the claims are directed to ineligible subject matter under \u00a7 101, lack novelty under \u00a7 102, are obvious under \u00a7 103, or fail the written description, enablement or definiteness requirements of \u00a7 112. Eligibility remains the most consequential defense in software, business method and diagnostic cases, and drafting choices made years earlier substantially determine how a claim fares.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Unenforceability<\/strong> through inequitable conduct, requiring proof that the applicant withheld material information or made a material misrepresentation to the USPTO with specific intent to deceive. The standard is deliberately demanding and successful assertions are uncommon, but the allegation alone expands discovery into privileged territory.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Statutory and equitable defenses<\/strong>, including prior commercial use under \u00a7 273, patent exhaustion following an authorized sale, express or implied license, equitable estoppel, patent misuse, and the limitation on damages for failure to mark under \u00a7 287.<\/li>\n<\/ul>\n<p><em>Trademarks.<\/em><\/p>\n<ul>\n<li><strong>No likelihood of confusion<\/strong>, assessed under the multi-factor test applied in the relevant circuit.<\/li>\n<li><strong>Classic fair use<\/strong>, being good faith descriptive use of a term to describe the defendant&#8217;s own goods or services rather than as a mark.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Nominative fair use<\/strong>, being accurate use of the plaintiff&#8217;s mark to refer to the plaintiff&#8217;s genuine goods or services, as in comparative advertising, compatibility statements and independent repair or resale.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Functionality<\/strong>, which bars protection for features essential to the use or purpose of the article or affecting its cost or quality. This is the defense that most often defeats product configuration trade dress claims, and consumer goods companies should assume any feature they can describe in engineering terms will be attacked as functional.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Expressive use<\/strong>, where use of the mark is part of protected speech rather than source identification.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Invalidity and equitable defenses<\/strong>, including abandonment through three consecutive years of non-use without intent to resume, genericness, naked licensing, fraud in procurement, laches, acquiescence and unclean hands.<\/li>\n<\/ul>\n<p><em>Copyrights.<\/em><\/p>\n<ul>\n<li><strong>Fair use<\/strong>, assessed under the four statutory factors in 17 U.S.C. \u00a7 107: the purpose and character of the use including whether it is transformative and whether it is commercial, the nature of the copyrighted work, the amount and substantiality of what was taken, and the effect on the potential market for the work. Fair use is the central battleground in disputes over training data and model outputs, and the law is developing rapidly enough that any company building on third-party content should be reassessing its position rather than relying on an analysis performed two years ago.<\/li>\n<li><strong>Non-infringement<\/strong>, through independent creation, absence of substantial similarity in protected expression, or reliance only on unprotectable elements under the idea-expression dichotomy, the merger doctrine and the sc\u00e8nes \u00e0 faire principle.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Other defenses<\/strong>, including the first sale doctrine, implied license, misuse, invalidity of the registration, the three-year limitation period, and safe harbor protection for qualifying online service providers.<\/li>\n<\/ul>\n<p><em>Trade secrets.<\/em><\/p>\n<ul>\n<li><strong>Independent development<\/strong>, supported by contemporaneous design records. Companies hiring from competitors should be maintaining clean-room documentation prospectively, since it is nearly impossible to construct after a claim is made.<\/li>\n<li><strong>Reverse engineering<\/strong> of a lawfully acquired product, which is a proper means of acquisition and a legitimate competitive strategy.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Public availability<\/strong>, showing the information was generally known or readily ascertainable by proper means.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Failure to take reasonable measures<\/strong>, which attacks the existence of the right itself.<\/li>\n<\/ul>\n<ul>\n<li><strong>Limitation and scope defenses<\/strong>, including the statutory limitation period and the constraints on injunctions that would restrain lawful employment.<\/li>\n<\/ul>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Who can challenge each of the intellectual property rights described in section A?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> Before grant, any third party may file a pre-issuance submission or a protest. After grant, the routes divide.<\/p>\n<p>Inter partes review may be petitioned by any person other than the patent owner. No injury or threat of suit is required to petition, which distinguishes the PTAB from the courts. Two qualifications on who counts as an eligible petitioner have become significant. First, a petition must identify all real parties in interest and all privies of the petitioner, and a failure to do so can be fatal to the petition regardless of the merits, so a party petitioning at the behest of, or with funding from, another must disclose that relationship at the outset. Second, in\u00a0<em>Tianma Microelectronics<\/em>\u00a0the Board held that a foreign sovereign is not a \u201cperson\u201d entitled to petition, which forecloses the route for state-owned and state-controlled entities that cannot separate themselves from the government behind them.<\/p>\n<p>A petitioner who loses and wishes to appeal to the Federal Circuit must establish Article III standing for the appeal, so a petitioner with no commercial exposure can win at the Board but be unable to appeal an adverse outcome. Estoppel attaches following a final written decision, barring the petitioner from later asserting in district court, at the ITC or at the USPTO any ground raised or that reasonably could have been raised.<\/p>\n<p>Post-grant review is available to any person other than the owner within nine months of grant, and reaches a wider set of grounds. Ex parte reexamination may be requested by anyone, including the patent owner, on the basis of patents or printed publications raising a substantial new question of patentability, though the requester has no continuing role once the proceeding begins. A new pre-order procedure applies to requests filed on or after 5 April 2026, under which the Office reviews the request before deciding whether to order reexamination, and requesters should confirm the current procedural requirements before filing rather than working from an older precedent request.<\/p>\n<p>In the courts, an accused infringer may challenge validity as a defense or counterclaim. A party not yet sued may bring a declaratory judgment action only where an actual case or controversy exists, which typically requires an affirmative act by the rights holder such as a demand letter or an assertion against a customer.<\/p>\n<p><em>Trademarks.<\/em> Any party who believes it would be damaged by registration or continued registration may oppose or petition to cancel, subject to demonstrating a real interest and a reasonable belief of damage. Validity may also be challenged in litigation as a defense or counterclaim.<\/p>\n<p><em>Copyrights.<\/em> There is no administrative cancellation procedure. Validity is challenged in litigation, or in a Copyright Claims Board proceeding where the parties are before that tribunal.<\/p>\n<p><em>Mask works.<\/em> Protectability and registration are challenged in litigation.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em> Pre-issuance submissions must be filed by the later of six months after publication or the first Office action rejecting a claim, and in any event before allowance. Post-grant review must be filed within nine months of grant or reissue. Inter partes review may be filed after that nine-month window closes or after any post-grant review concludes, and remains available throughout the patent&#8217;s life, subject to the one-year bar running from service of a complaint for infringement. Ex parte reexamination may be requested at any time during enforceability. Judicial challenges may be raised at any point during the term and afterwards, since damages claims survive expiry for the six-year statutory recovery period.<\/p>\n<p>The one-year bar deserves particular attention. A defendant served with a complaint has twelve months to file its petition, and preparing a credible petition takes time. Waiting to see how the district court case develops is a common and expensive mistake.<\/p>\n<p><em>Trademarks.<\/em> Opposition must be filed within 30 days of publication, extendable to 180 days. A cancellation petition may be filed on any statutory ground within the first five years of registration. Once the registration has become incontestable following five years of continuous use and the filing of the requisite declaration, the available grounds narrow substantially, to genericness, abandonment, fraud in procurement, functionality and a short list of others. Validity may be raised at any time in litigation.<\/p>\n<p><em>Copyrights.<\/em> Challenges may be raised at any time during the term, as a defense or counterclaim.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Patents.<\/em><\/p>\n<p>Forums are the PTAB, the federal district courts and the ITC.<\/p>\n<p>At the PTAB, inter partes review and post-grant review are trial-type proceedings before a panel of administrative patent judges, with limited discovery, a single opportunity to amend claims in most cases, an oral hearing, and a final written decision applying a preponderance of the evidence standard. In district court and at the ITC, invalidity is pleaded as a defense or counterclaim and must be proved by clear and convincing evidence, which is a materially higher burden and the principal reason petitioners have historically favored the Board.<\/p>\n<p>Grounds in district court, at the ITC and in post-grant review are the full statutory set: ineligible subject matter under \u00a7 101, anticipation under \u00a7 102, obviousness under \u00a7 103, and failure of written description, enablement or definiteness under \u00a7 112, together with unenforceability for inequitable conduct. Inter partes review is confined to anticipation and obviousness on the basis of patents and printed publications.<\/p>\n<p>Institution is discretionary, and the exercise of that discretion has changed more in the past eighteen months than in the preceding decade. Any strategy calibrated to the position as it stood in 2024 is now unsound.<\/p>\n<p>The sequence matters. Guidance issued in 2022 that had constrained discretionary denials where a petition presented compelling merits was rescinded on 28 February 2025. Interim guidance issued on 24 March 2025 restored the earlier framework under which the Board weighs the maturity of parallel district court or ITC proceedings, the overlap of issues, and the value of a stipulation by the petitioner not to pursue in the parallel forum grounds that could have been raised before the Board. On 26 March 2025 the Office adopted a bifurcated process in which the discretionary question is briefed and decided first, with the patent owner&#8217;s discretionary brief due within two months of the notice of filing date accorded, subject to a 20-page limit in force since 1 September 2025, and the petition referred to a three-judge merits panel only if it survives.<\/p>\n<p>The change of Director in September 2025 accelerated the shift. With effect from 20 October 2025 the Director assumed responsibility for all institution decisions in inter partes review and post-grant review, issuing determinations by summary notice rather than reasoned panel decision. The effect on outcomes is unambiguous. Discretionary denials ran at 61 percent of decisions issued under the bifurcated process during 2025. The overall institution rate fell to 50 percent across fiscal year 2025, a five-year low, and by February 2026 stood at roughly 37 percent against approximately 65 percent in October 2024. Rates diverge sharply by patent owner type, running at around 25 percent against non-practicing entities and 40 percent against operating companies in the first quarter of 2026.<\/p>\n<p>Petition behavior has shifted with the odds. Post-grant filings in the first quarter of 2026 fell by more than 60 percent against the same quarter of 2025, while requests for ex parte reexamination rose by more than 150 percent. Ex parte reexamination is now the practical fallback for a challenger who cannot clear the discretionary hurdle, which makes the procedural changes described at Question 27 more consequential than they first appear.<\/p>\n<p>The substantive factors have also expanded. A &#8220;settled expectations&#8221; consideration now weighs against instituting where a patent has been in force and unchallenged for a substantial period, and it has proved the single most influential factor in the denials issued to date. A memorandum issued on 11 March 2026 added factors directed to United States manufacturing activity, weighing the domestic footprint of both the patent owner and the challenger. Neither factor has an obvious statutory anchor, and both reward a patent owner that can document domestic operations.<\/p>\n<p>Two decisions define the current boundaries. In\u00a0<em>Apple v. Squires<\/em>, decided by the Federal Circuit in February 2026, the court confirmed that the Director&#8217;s institution discretion is effectively unreviewable and may be exercised without notice-and-comment rulemaking, which removes the principal avenue by which petitioners had hoped to constrain the practice. In\u00a0<em>Magnolia Medical Technologies, Inc. v. Kurin, Inc.<\/em>, IPR2026-00097, designated precedential on 14 May 2026, the Office set out a multifactor public-interest framework governing when discretionary denial is appropriate, which is now the primary text a petitioner must address in its briefing. The Office has also designated a body of decisions addressing discretionary considerations at the institution stage, including both denials and referrals to the merits, and a petitioner drafting an opposition should work from that set rather than from general principle.<\/p>\n<p>A notice of proposed rulemaking issued on 17 October 2025 would amend 37 C.F.R. \u00a7 42.108 to codify much of this, adding a mandatory stipulation requirement, a bar where the claims have previously been found not invalid in any other forum, and a bar where a parallel proceeding is likely to reach a validity determination first, subject to an extraordinary circumstances exception the Director controls personally. The comment period closed on 2 December 2025 and the rule had not been finalized at the time of writing. The proposal reaches inter partes review only; no equivalent amendment was proposed to the rule governing post-grant review. The constitutional foundations of the discretionary regime are separately under challenge before the Federal Circuit, so the position may move again.<\/p>\n<p>The practical upshot for a party considering a post-grant challenge is that the discretionary brief is now the main event, that the petition must be filed early enough in the life of the parallel litigation to survive it, and that the cost advantage described at Question 18 is only realised if the petition is instituted at all. Timing has become the dominant variable. Petitioners who file within a few months of service, before the parallel docket matures, continue to be instituted at rates well above the average, while those who file reactively against an advanced district court schedule are denied on the papers regardless of the strength of their art. Defendants who once treated inter partes review as the default first move should now be modelling it as a contingent option and preserving their district court invalidity case accordingly.<\/p>\n<p>Validity findings by the ITC do not bind district courts, though they carry persuasive weight. PTAB determinations do bind, subject to appeal.<\/p>\n<p><em>Trademarks.<\/em><\/p>\n<p>Forums are the TTAB and the federal district courts. TTAB proceedings follow rules resembling civil litigation, with pleadings, discovery, testimony submitted in written form, briefing and, on request, oral argument. The Board decides registrability only. It cannot award damages or enjoin use, so a party seeking to stop conduct rather than to clear the register must litigate.<\/p>\n<p>Grounds include likelihood of confusion with a prior mark, mere descriptiveness or deceptive misdescriptiveness without acquired distinctiveness, genericness, functionality, abandonment, fraud on the USPTO, lack of bona fide intent to use, and non-use as of the claimed date.<\/p>\n<p><em>Copyrights.<\/em><\/p>\n<p>Forums are the federal district courts, and the Copyright Claims Board for capped claims. Challenges proceed as defenses or counterclaims. Grounds include lack of originality, absence of copyrightable subject matter, expiry into the public domain, and knowing material misrepresentation in the application where the applicant knew the information was inaccurate and the Copyright Office would have refused registration had it known.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are there any other methods to remove or limit the effect of any of the intellectual property rights described in section A, for example, declaratory relief or licences of right?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Declaratory relief.<\/em> A party facing a credible threat of infringement proceedings may file a declaratory judgment action under 28 U.S.C. \u00a7 2201, provided an actual controversy exists. The court can declare the right invalid, unenforceable or not infringed. Filing first also allows the declaratory plaintiff to select the forum, subject to the court&#8217;s discretion, which is a meaningful tactical advantage where the alternative is being sued in a venue the rights holder has chosen.<\/p>\n<p><em>No general licenses of right.<\/em> US law recognizes no general compulsory licensing or license of right regime for patents or trademarks. Owners retain discretion to refuse to license. Limited statutory exceptions exist.<\/p>\n<ul>\n<li><strong>Copyright compulsory licenses.<\/strong> A mechanical license under 17 U.S.C. \u00a7 115 permits reproduction and distribution of non-dramatic musical works once released, at statutory rates administered collectively. Statutory licenses under \u00a7 114 cover non-interactive digital audio transmission.<\/li>\n<li><strong>Government use.<\/strong> Under 28 U.S.C. \u00a7 1498, the federal government and its contractors acting with authorization may use patented inventions without consent. The patentee&#8217;s sole remedy is an action in the Court of Federal Claims for reasonable and entire compensation, and injunctive relief is unavailable. This is not a marginal doctrine for anyone selling into defense and government markets, and it changes the calculus of both enforcement and supply agreements.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Federally funded inventions.<\/strong> Inventions arising from federally funded research are subject to the Bayh-Dole framework, which imposes disclosure, election and reporting obligations, reserves a government license, and preserves march-in rights in defined circumstances. University spinouts and defense-adjacent companies frequently inherit these obligations without appreciating that they run with the patent and are reviewed for diligence in every serious transaction.<\/li>\n<\/ul>\n<ul>\n<li><strong>Government contract data rights.<\/strong> Rights in technical data and software delivered under federal contracts are governed by the FAR and DFARS regimes rather than by patent or copyright law alone. Whether the government receives unlimited, government purpose or limited rights turns on the funding source for the development and on markings applied at delivery. Errors here are commercially serious and largely irreversible, and the point of control is the proposal and the contract, not the litigation that follows.<\/li>\n<\/ul>\n<p><em>Misuse and antitrust.<\/em> Courts may decline to enforce rights where the owner has impermissibly broadened the scope of the grant, whether temporally or in subject matter, through mechanisms such as post-expiry royalties or anticompetitive tying. Enforcement of a patent obtained by knowing and willful fraud can expose the owner to antitrust liability. Standard-essential patents subject to FRAND commitments carry contractual and competition law constraints on the terms that may be demanded and on the availability of injunctive relief.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in section A?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Interim remedies.<\/em><\/p>\n<p>A temporary restraining order may issue, in urgent cases without notice, for a short period, to prevent immediate irreparable harm or to preserve evidence and inventory before a defendant can dissipate it.<\/p>\n<p>A preliminary injunction requires the movant to establish likelihood of success on the merits, likelihood of irreparable harm absent relief, that the balance of equities favors the movant, and that an injunction serves the public interest. Irreparable harm is not presumed from a finding of likely infringement, and evidence of delay in bringing the application, or of a willingness to license, undermines it.<\/p>\n<p>Ex parte seizure is available in counterfeiting cases under 15 U.S.C. \u00a7 1116(d), executed by federal marshals against counterfeit goods, records and manufacturing equipment. The Defend Trade Secrets Act provides a parallel civil seizure remedy in extraordinary circumstances where other relief would be inadequate.<\/p>\n<p><em>Final remedies.<\/em><\/p>\n<p><strong>Patents.<\/strong> Permanent injunctions are assessed under a four-factor equitable standard rather than granted automatically on a finding of infringement, and the outcome turns heavily on whether the parties compete. Practicing competitors obtain injunctions with some regularity; non-practicing entities rarely do. Section 284 requires damages adequate to compensate for the infringement, and in no event less than a reasonable royalty, with lost profits available where the patentee can establish demand, absence of acceptable non-infringing alternatives, capacity to meet demand, and quantifiable profit.\u00a0 Damages may be enhanced up to three times for willful infringement, at the court&#8217;s discretion.<\/p>\n<p>Marking is worth emphasizing. Under 35 U.S.C. \u00a7 287, a patentee that sells or licenses a patented article and fails to mark it recovers damages only from the date of actual notice, which in practice often means the filing of the complaint. Years of recoverable damages are routinely lost this way. Virtual marking through a freely accessible website satisfies the requirement and is straightforward to maintain, and licensees must be required to mark as well. For consumer products companies selling high volumes at modest unit prices, the marking program can be worth more than any other single element of the enforcement strategy.<\/p>\n<p><strong>Trademarks.<\/strong> Permanent injunctive relief against continued confusing use or dilution. Monetary remedies under 15 U.S.C. \u00a7 1117 include the defendant&#8217;s profits, the plaintiff&#8217;s actual damages and the costs of the action, with discretion to award up to three times actual damages where the award would otherwise be inadequate. Statutory damages are available in counterfeiting cases, ranging from $1,000 to $200,000 per counterfeit mark per type of goods or services, rising to $2,000,000 per mark for willful counterfeiting. Statutory damages are the practical remedy against counterfeiters whose sales records are unavailable or fabricated. Courts may also order destruction of infringing goods, labels and packaging, and in appropriate cases corrective advertising.<\/p>\n<p><strong>Copyrights.<\/strong> Injunctive relief, impoundment and destruction of infringing copies and the means of making them. The owner elects either actual damages plus the infringer&#8217;s additional profits, or statutory damages ranging from $750 to $30,000 per work, rising to $150,000 per work for willful infringement and reducible to $200 for innocent infringement. Statutory damages and attorneys&#8217; fees are available only where the work was registered before the infringement began or within three months of first publication. Prompt registration is therefore an enforcement decision, not an administrative one.<\/p>\n<p><strong>Trade secrets.<\/strong> Injunctions against actual or threatened misappropriation, subject to limits protecting lawful employment mobility. Damages for actual loss and unjust enrichment, or in the alternative a reasonable royalty. Exemplary damages up to twice the compensatory award for willful and malicious misappropriation, and attorneys&#8217; fees.<\/p>\n<p><strong>ITC.<\/strong> Exclusion orders and cease and desist orders only. No damages.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p><em>Costs.<\/em> Litigation costs in the United States are high by international standards and vary primarily with the amount at risk rather than with the technology. Survey data published by the American Intellectual Property Law Association for 2024 puts the median cost of patent infringement litigation through claim construction at roughly $250,000 at the low end of the exposure range and $2 million where more than $25 million is at stake, rising to approximately $450,000 and $3.5 million respectively once pre-trial, trial and appeal are included. Trademark infringement runs at roughly a quarter of that, as set out at Question 18. Inter partes review offers a lower-cost route to a validity determination, with median costs through a PTAB hearing ranging from approximately $300,000 for mechanical subject matter to $500,000 for life sciences subject matter, though the sharp rise in discretionary denials described at Question 29 has reduced the reliability of that route as a budgeting assumption. Drivers of variation include the number of asserted rights and accused products, the volume of electronic discovery, the number of experts, the existence of parallel PTAB or ITC proceedings, and whether the case is appealed.<\/p>\n<p><em>Recovery.<\/em> Under the American Rule each party bears its own attorneys&#8217; fees regardless of outcome, unless a specific fee-shifting provision applies.<\/p>\n<ul>\n<li><strong>Patents<\/strong>, under 35 U.S.C. \u00a7 285, permit an award to the prevailing party in exceptional cases, meaning cases that stand out from others in the substantive strength of a party&#8217;s position or in the unreasonable manner of litigation. Both patentees and accused infringers recover under this provision.<\/li>\n<li><strong>Trademarks<\/strong>, under 15 U.S.C. \u00a7 1117(a), apply the same exceptional case standard.<\/li>\n<\/ul>\n<ul>\n<li><strong>Copyrights<\/strong>, under 17 U.S.C. \u00a7 505, give the court broad discretion to award full costs and reasonable fees to either side, weighing objective reasonableness, motivation, frivolousness and the need for deterrence. The registration timing requirement applies.<\/li>\n<\/ul>\n<ul>\n<li><strong>Trade secrets<\/strong>, under the DTSA, permit fees where misappropriation was willful and malicious, or where a claim was made in bad faith or a motion to terminate an injunction was made or opposed in bad faith.<strong style=\"font-size: 1rem\">\u00a0<\/strong><\/li>\n<\/ul>\n<ul>\n<li><strong>Taxable costs<\/strong> under 28 U.S.C. \u00a7 1920 are recoverable as of course by the prevailing party, covering filing fees, transcripts, witness fees and certain copying, and amounting to a small fraction of actual expenditure.<\/li>\n<\/ul>\n<p>No fee shifting is available in ITC investigations.<\/p>\n<p><em>Security.<\/em> There is no general security for costs regime comparable to those in other jurisdictions. Two mechanisms operate.<\/p>\n<p>Under Federal Rule of Civil Procedure 65(c), a party obtaining a preliminary injunction or temporary restraining order must give security in an amount the court considers proper to pay the costs and damages of a party later found to have been wrongfully enjoined. Where the enjoined conduct is a significant revenue line, the bond can be substantial and can determine whether interim relief is practically available.<\/p>\n<p>Under local rules in a number of districts, a court has discretion to require a plaintiff that is a non-resident or lacks assets within the jurisdiction to post security for costs. The amounts are modest and the mechanism is rarely a meaningful deterrent to a funded claimant.<\/p>\n<p>Litigation funding is increasingly common in US IP disputes, particularly in patent assertion, and a growing number of courts and standing orders now require disclosure of funding arrangements. Any party litigating with third-party funding should confirm the disclosure position in the chosen forum at the outset.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\r\n<div class=\"word-count-hidden\" style=\"display:none;\">Estimated word count: <span class=\"word-count\">13857<\/span><\/div>\r\n\r\n\t\t\t<\/ol>\r\n\r\n<script type=\"text\/javascript\" src=\"\/wp-content\/themes\/twentyseventeen\/src\/jquery\/components\/filter-guides.js\" async><\/script><\/div>"}},"_links":{"self":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide\/147786","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide"}],"about":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/types\/comparative_guide"}],"wp:attachment":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/media?parent=147786"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}