Practice/Industry Group Overview
As one of few global firms with a full-service IP Practice, and operating as One Firm Worldwide, Jones Day provides clients with access to IP lawyers in the United States, Europe, and Asia who are experienced in litigation, prosecution, licensing and technology transfer, and IP counseling.
With nearly 230 lawyers, many of whom have advanced degrees and industry experience in cutting-edge scientific disciplines, we have the "bench strength" and depth to handle any IP issue imaginable. Moreover, in this new economic age in which financial responsibility and "no surprises" are now facts of life in the world of corporate legal budgets, we take great pride in working with in-house IP counsel to achieve their desired results in a cost-effective and efficient manner. Thus, it is not surprising that brand name companies in the U.S. and around the globe, including many Fortune 500 companies, have turned to Jones Day to solve their IP problems and to protect, enhance, and maximize the value of their global IP assets.
In addition, Jones Day Intellectual Property Agency (Beijing) Co., Ltd. is licensed to handle a wide range of copyright, trademark, and other non-patent intellectual property matters in China.
||2013-2014 Life Sciences Webinar Series: Current Trends and Issues in Venture Capital for Life Sciences Companies, January 15, 2014
2013-2014 Life Sciences Webinar Series: Creating Robust Pipelines: Developing Trends in Life Sciences R&D Strategies Using Options to Acquire, December 11, 2013
2013 Speaker Series: Whose Content Is It Anyway? IP Issues in Social Media, November 20, 2013
2013-2014 Life Sciences Webinar Series: Intellectual Property, Regulatory, and Antitrust Issues in Life Sciences M&A and Capital Markets Transactions, November 13, 2013
Articles Authored by Lawyers at this office:
Can a Patent Application Violate the Copyright Laws?
Jessica D. Bradley,Edwin L. Fountain, December 19, 2013
Recent decisions from two federal district courts have rebuffed efforts by publishers of scientific journals to claim copyright violations based on the copying of the publishers' articles for purposes of preparing patent applications submitted to the U.S. Patent & Trademark Office...
The EPO Rescinds its Current Practice for Divisional Filings
Diana C. Leguizamon-Morales,Martin Weber, October 23, 2013
The rumors are true: An official notice posted on the website of the European Patent Office ("EPO") on October 18, 2013 confirms that the EPO will change its current practice of forcing applicants to file divisional patent applications within certain two-year time windows.
China's New Trademark Law
Haifeng Huang,Chiang Ling Li, October 14, 2013
China's new Trademark Law has been issued and will become effective on May 1, 2014. Important changes in the areas of anti-piracy, prosecution, enforcement, well-known mark determination and usage, opposition, and cancellation have been made. Foreign companies and their counsel should be aware of...
FTC Proposes Study of Patent Assertion Entity Activities, Holdings, and Structure
Gregory L. Lippetz,Geoffrey D. Oliver, October 03, 2013
On September 27, the Federal Trade Commission ("FTC") announced a proposal to use its authority under Section 6(b) of the Federal Trade Commission Act, 15 U.S.C. § 46(b), to issue compulsory process orders requesting detailed information about the makeup and patent assertion...
Accenture Global Services: The Continued Struggle to Divine Patent-Eligible Subject Matter
John V. Biernacki,Matthew W. Johnson,Kelsey I. Nix, September 19, 2013
The U.S. Supreme Court in Bilski v. Kappos and its predecessor decisions has made clear that claims directed to abstract ideas are unpatentable under 35 U.S.C. § 101. Unfortunately, the clarity in § 101 appears to end there. In Bilski, the Supreme Court declined to articulate a practical...
(Cross-)License Agreements in German Insolvency Proceedings: An Update
Ansgar C. Rempp,Christian Staps, August 23, 2013
On July 25, the Higher Regional Court (Oberlandesgericht) of Munich ruled that an irrevocable license does not become unenforceable in German insolvency proceedings. The judgment concerned the rejection of a cross-license by an insolvency administrator. Cross-license agreements play a significant...
President Disapproves ITC Remedial Orders Based on Standards-Essential Patent
Blaney Harper,Ric Macchiaroli,David M. Maiorana, August 14, 2013
President Obama, acting through the United States Trade Representative ("USTR"), has disapproved a limited exclusion order and cease and desist order issued by the United States International Trade Commission (the "Commission") that covered an allegedly standards-essential...
Europe Harmonizes How Operators Must Notify Personal Data Breaches
, July 18, 2013
On June 26, the European Commission published Regulation 611/2013 ("Regulation") which harmonizes across the 28 EU Member States the practical operation of notifying personal data breaches. This clarifies a requirement contained in the E-Privacy Directive since 2009 (Directive 2002/58/EC...
Two Interesting German Decisions on Internet Law
Marc F-X Groebl,Jakob Guhn, June 18, 2013
Over the course of the month of May, the German Federal Supreme Court rendered two important decisions in the area of internet law, shedding some light on issues that had remained unclear and widely discussed for some time. The first decision sets boundaries to the practical assistance performed by...
Texas Enacts Uniform Trade Secrets Act
Joseph M. Beauchamp,Brian M. Jorgensen,Robert W. Kantner, June 10, 2013
The Texas Uniform Trade Secrets Act ("TUTSA") was recently signed into law and will take effect on September 1, 2013. TUTSA primarily codifies Texas's current trade secret law, while strengthening trade secret protections and providing greater certainty to misappropriation claims....
CLS Bank: Is This the "Death of Hundreds of Thousands of Patents"?
John V. Biernacki,Gregory A. Castanias,David M. Maiorana,Douglas S. Weinstein, May 24, 2013
Many software and internet companies have secured patents on their technology to protect their investments. For some companies, such as startups, their software or business method patents may be their only valuable assets. However, in recent years, an unexpected thorn in the side of such patents...
Inter Partes Review
, May 15, 2013
Inter partes review provides an opportunity to challenge an issued patent under 35 U.S.C. §§ 102 and 103 based on prior art patents or printed publications. A petition for inter partes review is made by any party other than the patent owner, and is available for any issued patent (i.e.,...
Transitional Program for Covered Business Method Patents
, May 15, 2013
The Transitional Program for Covered Business Method Patents offers a proceeding for challenging the validity of patents granted for methods and apparatuses for performing data processing or other operations used in the practice, administration, or management of a financial product or service....
Second Circuit Clarifies Copyright Fair Use Standard
, May 03, 2013
The Second Circuit's recent decision in Cariou v. Prince, Docket No. 11-1197-cv (2d Cir. April 25, 2013), clarifies that copyright fair use is not limited to works that offer some "comment" on copyrighted content. The court held as a matter of law that 25 of well-known appropriation...
Fast-forward for FRAND Disputes in Europe
Christian B. Fulda,Johannes G. Zöttl, Zöttl, April 15, 2013
The Regional Court of Düsseldorf, Germany, has asked the Court of Justice of the European Union ("CJEU") to clarify a number of questions at the intersection of EU and German antitrust laws and patent law. The Düsseldorf court hears the greatest number of patent cases in...
Do You Know California's "Right To Know Act of 2013"?
Mauricio F. Paez,Katherine S. Ritchey, April 10, 2013
California's Right to Know Act of 2013 (Assembly Bill 1291), permits a consumer to obtain full disclosure upon request of personal information held by a company about the consumer. It is the latest in a long line of privacy initiatives from California, which considers itself a leader in this space....
The Way Forward: Reform to Hong Kong's Patent System
Anita Leung, April 10, 2013
With a goal to transform Hong Kong into an innovation and technology hub, the Hong Kong Administration commenced a comprehensive review of the patent system in 2011 and issued a consultation paper to invite comments from the public. An Advisory Committee on Review of the Patent System was later...
USITC Orders 100-Day Domestic Industry Determination in Latest Investigation
Blaney Harper,Ric Macchiaroli,David M. Maiorana, April 10, 2013
On March 28, 2013, the United States International Trade Commission ordered Administrative Law Judge Theodore R. Essex to issue an initial determination, within the first 100 days of the recently instituted Laminated Packaging Investigation, as to whether complainant Lamina Packaging Innovations...
FTC Updates Guidance on Online Advertising Disclosures
John G. Froemming,Susan M. Kayser,Meredith M. Wilkes, March 22, 2013
On March 12, 2013, the Federal Trade Commission issued revised guidance for online advertisers on how to make "clear and conspicuous" disclosures to ensure that an online advertisement is truthful and not misleading. The guidance, .com Disclosures: How to Make Effective Disclosures in...
Italian Appeals Court Overturns Google Privacy Convictions
Amir Q. Amiri,Stefano Macchi di Cellere,Mauricio F. Paez,Katherine S. Ritchey,Gregory P. Silberman, March 21, 2013
The appellate court in Milan recently published its decision overturning the conviction of three Google executives on charges of Unlawful Data Processing in violation of Article 167 of the Italian Privacy Code. The executives—who were high-level business and legal officers—were given...