The attorneys in Hodgson Russ’s Intellectual Property practice understand you are passionate about your work. So are we. We appreciate that businesses need experienced, capable legal advisors to help navigate the world of intellectual property law, and we attend to your immediate intellectual property needs and work with you to devise a long-term IP portfolio-building strategy.

The quality of our work stems from our experience and technical depth. Our team of attorneys, paralegals, and registered patent agents offers strategic counsel to clients, from small businesses to major research and educational institutions and Fortune 500 corporations, across a wide variety of industries. Many Hodgson Russ IP attorneys have advanced technical degrees in addition to law degrees, and many worked in academia or industries including software, energy, semiconductor, manufacturing, plastics, information technology, and automotive, giving our attorneys the ability to understand complex technologies. We work seamlessly as a team and that allows us to tackle technologies that may require knowledge of multiple fields. We take the time to listen to our clients’ objectives and provide them economically sensible approaches to achieve their goals.

Areas of COncentration

Copyrights

Intellectual Property Litigation

Intellectual Property Portfolio Management

Patent Preparation and Prosecution

Trade Secrets and Non-Disclosure Agreements

Trademark & Domain Name Registration

Trademark Oppositions and Cancellations

Hodgson Russ has been awarded a prestigious Best Law Firms Metropolitan Tier 1 ranking by Best Lawyers/U.S. News & World Report in the Patent Law category.

Experience

Advise client in connection with trademark advice and strategy in dealing with Chinese trademark pirates

Defended client in cancellation action involving a registration, commenced a parallel opposition proceeding against adverse party

Defended design patent infringement action involving jewelry designs for several large jewelry manufacturers and distributors

Defended large clothing company against claims of trademark infringement and trade dress infringement and simultaneously sought to enforce an existing trademark coexistence agreement

Defended trademark infringement action for major clothing company in the Southern District of New York

Negotiated fragrance license agreement with clothing company

Obtained favorable settlements for media company client on copyright infringement action

Negotiated favorable settlement and coexistence agreement for client after an adverse party filed trademark applications in the U.S. and E.U.

People

News & Insights

Podcasts

  • Using Australian Expedited Examination to Accelerate Your Global Patent Portfolio

    Australia is a big country (a continent, in fact), but it’s position in the global semiconductor market is not nearly as large.  Even though the Australian semiconductor industry is small, nestled in the country’s unique patent examination system is a pathway to accelerate examination of your global patent portfolio.  Expedited examination in Australia is free and can be requested in many situations.  It also can result in a granted patent in less than one year from the request.  Elizabeth and Nathaniel are joined on this episode by Paul Davis and Fraser Smith from Davis IP to discuss how a positive result down under can then be used to accelerate patent examination in other jurisdictions.  They also talked about how navigate Australia’s acceptance window during patent examination and some upcoming changes to the fee structure for Australian patent applications.

  • What Legal Teams in the Semiconductor Industry Can Learn from Barbie

    While the knockoff concerns and “packaging” are a little different, the underlying legal problems are surprisingly similar between the semiconductor and toy industries. Both have extremely complex supply chains. Knockoffs in either space can lead to costly reliability and quality problems. For both, IP is one of the most valuable assets and represents thousands of hours of development and market research. 

    Nathaniel and Elizabeth were joined by Jordan Walbesser, Director of Legal & Business Affairs at Mattel, Inc., to learn more about how the toy industry approaches these issues. They talked about a more friendly approach to licensing, working upstream in the supply chain, RFPs, and how to protect products when patent protection isn’t appropriate (or isn’t possible). On the last point, Jordan explained that product quality and customer service can protect you when patent protection is limited – whether that cost-sensitive customer is a parent shopping for an upcoming birthday or a massive multinational company.

  • AI Trends: A (non-GPT) Chat with OpenAI

    Companies can’t escape AI.  It’s in the news.  It’s being added to existing software products we use.  It’s being pitched to solve all sorts of problems.  AI seems like it will play a big role in R&D, legal, HR, and other fields, but how will it be implemented?  What should companies be doing during adoption and testing?  What are the risks?  Rather than ask ChatGPT, Elizabeth Morris and Nathaniel Lucek spoke with Ashley Pantuliano, Deputy General Counsel at OpenAI.  Ashley admitted that are still legal grey areas with AI usage, but these grey areas keep changing.  Tech fluency and updated policies can help avoid pitfalls in this ever-evolving area of law.

  • Patent Trolls in the World of Semiconductors

    Business executives and patent practitioners tend to have similar negative feelings around patent trolls and their letters offering to license sometimes dubious IP. These patent troll entities tend to file a large volume of nuisance lawsuits, which increases legal costs for companies. No industry is immune and these lawsuits impact companies at all levels of semiconductor manufacturing. But besides their ultimate goal of making money using their collection of patents, how do these patent trolls operate? Where do they find their targets? And, most importantly, what should you do when you receive a letter from a patent troll? Nathaniel and Elizabeth are joined on this episode by Pat Muffo, who is a patent attorney and IP litigator. Pat shares his insights and experiences gained from studying, writing about, and battling with patent trolls.

  • Changes to Filing US Patent Applications: The USPTO’s DOCX Program

    The process to file US patent applications online has been almost the same for the past 10-15 years. That filing process finally changed in January 2024 when the USPTO started requiring new U.S. nonprovisional patent applications be uploaded as DOCX files to avoid a surcharge. The DOCX requirement, which was postponed repeatedly, caused an uproar in certain corners of the U.S. IP world. But what does the DOCX requirement cover and what will the impact be? Nathaniel and Elizabeth are joined by John DiMaio, a patent attorney at Hodgson Russ, to figure out if this new requirement harms applicant rights or if the risks are exaggerated.

  • IMEC: How Did Belgium End Up as a Semiconductor Research Powerhouse?

    Belgium is known for many products: chocolate, beer, waffles, and many others. Folks in the semiconductor industry also recognize that it is a leader in semiconductor research. But why is that? How did such a small country position itself to have an outsized role in this industry? To answer these questions, Nathaniel Lucek and Elizabeth Morris were joined by John Baekelmans, a former VP at IMEC and currently Science and Technology Counselor at Flanders Investment and Trade. John shared the history of IMEC, including the bold decision by the government to build IMEC. We also explored how IMEC fits into the local research ecosystem and some of its current research focuses.

  • Another Option to Protect Spares: Design Patents for Consumable Parts

    The spares business is an essential revenue stream for semiconductor capital equipment manufacturers. While these components typically are not easy to protect with a utility patent application, many of them are ideal for design patent protection. Nathaniel Lucek and Elizabeth Morris were joined by Charles Rauch, head of the design patent practice at Hodgson Russ LLP, to talk about the benefits of design patent protection. Charlie explained how design patents can be used to protect components like graphite shields or end effector components. Charlie also explained how design patents are enforced against third party manufacturers.

  • Artificial Intelligence at Work: How Policies Can Save Your IP

    Applications for artificial intelligence at work seem boundless. AI could even write this episode summary (it didn’t, but maybe it should have). However, using AI carries risks to intellectual property protection, confidentiality, and bias. Look no further than the chip manufacturer that shared confidential information with ChatGPT to find a fix. On this episode, Nathaniel Lucek and Elizabeth Morris spoke with Hodgson Russ LLP attorney Rosellen Marohn about these risks and policies that companies can use to avoid problems. It’s probably no surprise that a single AI policy can’t be used for all parts of a business. Companies need to determine how AI will be used across the company and then develop specific policies with employee training about acceptable use.

    Here are links to various articles or topics mentioned in the podcast:

    What is AI?

    Samsung

    Barbie

  • Borrowing Tools from Project Management to Build Your In-House Legal Department

    Project management and team building are vital when running an in-house legal team. Sadly, those are not skills that are tested on the bar exam. In this episode, Nathaniel and Elizabeth are joined by Sean Blixseth, Managing Senior Counsel at Panasonic to learn about best practices when inserting legal into a product team. They discussed the importance of living in the business, embracing project management, and borrowing engineering tools to optimize your legal function – including the idea of hack-a-thons for streamlined legal procedures.

  • Increasing Invention Disclosures from Underrepresented Inventors: The “She Invents” Program at Western Digital

    Companies in the semiconductor industry need to gather invention disclosures from all corners of the company to help maintain a competitive advantage. Yet studies have shown that participation among different groups of inventors can be uneven, which leads to underrepresentation by certain groups. For example, the USPTO has shown that women are 20% of the technical workforce, but only 10% of inventors. On this episode, we are joined by Sabra Truesdale to learn about the “She Invents” program at Western Digital, which demonstrated an 88% increase in female inventor participation in its patenting process. Sabra explains some of the causes in underparticipation by women inventors and how the Western Digital program addresses these causes.

  • Trade Secrets Theft and Your Dirty Laundry

    Trade secrets represent an astronomical amount of the intellectual property in the semiconductor industry. But how do you protect these trade secrets and keep them safe? And what happens when you detect that your trade secrets may not be secure? Nathaniel Lucek and Elizabeth Morris are joined by Melissa Subjeck and Lura Bechtel from Hodgson Russ LLP to discuss trade secret protection and options to detect theft. They also explain what happens during an investigation for trade secret theft – including examples of the dirty laundry that can come out during an investigation.

  • Artificial Intelligence and the Law: Rise of the Machine Inventor

    We know that the advance of artificial intelligence absolutely will not stop (it was in a movie). To assess where AI may go with respect to law, Nathaniel Lucek and Elizabeth Morris spoke with David Sanker, Ph.D., who works on patent matters related to machine learning. The group discussed patent inventorship with AI, patentability of machine learning, AI assistance with patent drafting and patent examination, and machine learning algorithms for job candidate interviews.

  • Unitary Patent and Unified Patent Court: What Patent Law Changes in Europe Mean for Semiconductor Innovation

    After years of waiting, Europe is finally experiencing big changes with its Unitary Patent (UP) and new Unified Patent Court (UPC). The UPC will be open for business in June 2023 and will dramatically change how patents are litigated in Europe. The cost structure and benefits for a UP are already being analyzed for pending patent applications in Europe. But what does this mean for semiconductor innovation? Nathaniel Lucek and Elizabeth Morris are joined by Paul Keane, a European Patent Attorney at FRKelly in Dublin, to learn how these changes will affect companies in the semiconductor space and to discuss initial strategies for patent applicants that are considering their options.

  • Working with University Researchers: Best Practices For University Tech Licensing

    Universities have some of the foremost technical experts on the planet. So how can companies best use this brainpower? And what are the universities hoping to receive in return? In this episode of The Semi Interesting Podcast, Hodgson Russ LLP Partner Nathaniel Lucek and Pure Storage’s Legal Director of IP & Product Elizabeth Morris explore university tech licensing with Cheryl Junker, Associate Director for IP Transactions at Dartmouth College. They will discuss a university’s objectives when entering into a research agreement, the types of contract provisions that a university can’t change (no matter how nicely you ask), and why Bob Dole won’t let your company pay an enormous amount of money to walk away with all the intellectual property no strings attached.

  • Designing a Patent Strategy for Enforcement

    For such an unassuming document, patents can be hugely important. Whether you’re an inventor who just developed the next “latest and greatest” idea, or a company that helps those inventors get their product out in to distribution, patenting is an important part of the process. It can literally make or break your opportunities for growth and business.

    In this episode of The Semi Interesting Podcast, Hodgson Russ LLP Partner Nathaniel Lucek and Pure Storage’s Legal Director of IP & Product Elizabeth Morris dive in to the patenting process. They’ll explain why designing a patent strategy tends to work best when it’s done as a team effort, how to be ready to throw elbows when competitors start crowding nearby, as well as why thinking bigger really is better when it comes to patenting in the semiconductor industry.

  • Inventing isn’t just for people with PhD’s

    In Episode Two of “The Semi Interesting Podcast,” we’re talking about one of the toughest issues facing any company – pulling in quality talent, and retaining it. In an industry as small (literally and figuratively) as that of semiconductors, that task can be daunting, to say the least. As difficult as it is to cultivate new talent, it’s equally as tough for those with talent to navigate the intellectual property patenting process. In this episode, Nathaniel Lucek and Elizabeth Morris take a look at how companies can break down the barriers for inventors and make it easier for them to get their ideas into the industry.

  • Generating Engagement with Inventors

    You’ve probably heard the saying, “It’s hard to find good help these days.” No matter what industry you’re working in, that saying almost always rings true. But once you do manage to find that good help – or inventors, in the case of the semiconductor industry – how do you retain it? Enter, the Semi Interesting Podcast Episode One.

    In the premiere episode, Hodgson Russ LLP Partner Nathaniel Lucek and Pure Storage’s Legal Director of IP & Product Elizabeth Morris take a look at strategies on how to generate engagement with inventors. As they explain, it’s not always about the monetary reward when it comes to encouraging inventors.

  • Semi Interesting Podcast TRAILER

    We are launching a brand new podcast here at Hodgson Russ LLP – “The Semi Interesting Podcast.”

    Don’t let the name fool you! The podcast is about semiconductors – see what we did there? – and it’s extremely interesting! Hosts Nathaniel Lucek and Elizabeth Morris offer a unique perspective on issues facing the industry. Join them and find out why the semi conductor industry is far more than semi-interesting!

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Intellectual Property / News & Insights