DOSSIER · IP

Enforcing & Defending IP

Challenging patents, policing marks, substantiating claims, and the limits of fair use.

Brief stack

In this dossier

IP-04 · 01

Challenging a Patent: Inter Partes Review and PTAB Practice

8 MIN · IP

Inter partes review is a narrow, fast, expensive way to kill patent claims — and it closes doors permanently. This brief maps the timing gates, the grounds limit, and the estoppel that follows a final written decision.

An inter partes review petition may generally be filed once nine months have passed since the patent issued or was reissued.
Grounds are limited to anticipation and obviousness, and only on prior art consisting of patents and printed publications.
Service of an infringement complaint starts a one-year clock; after it runs, 35 U.S.C. 315(b) bars the petition entirely.

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IP-05 · 02

Cease-and-Desist Letters: Strategy, Risk, and Declaratory Judgment

8 MIN · IP

A demand letter is not a warning shot. It can create federal jurisdiction for the recipient, start damages clocks, and trigger preservation duties on both sides at once.

A letter that creates a substantial, immediate controversy can give the recipient standing to sue first, in a forum of its choosing.
Wording controls that risk: identifying a patent, a product, and a demand moves a letter toward jurisdiction; an open licensing enquiry moves away.
Sending or receiving a demand triggers preservation duties, so routine deletion has to stop before anyone drafts a reply.

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IP-08 · 03

Advertising Claims: Substantiation and False Advertising Exposure

10 MIN · IP

Two systems police advertising claims at once: an agency that asks whether you had proof before you spoke, and competitors who can sue you for the sales you took.

The FTC requires a reasonable basis for an objective claim before it is disseminated, not assembled afterwards in response to an inquiry.
The claim being tested is what consumers reasonably take away, including implied messages, not the literal words the advertiser chose.
Lanham Act 43(a) lets a competitor sue over false or misleading commercial advertising and recover damages, profits, and sometimes fees.

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IP-09 · 04

Fair Use in Commercial Content: Applying the Four Factors

10 MIN · IP

Fair use is a defence decided case by case, not a rule with safe amounts. This brief works through the four statutory factors as a commercial publisher has to apply them.

Section 107 lists four factors and no safe harbours; there is no percentage, word count, or number of seconds that is automatically fair.
The first factor asks whether the new use has a genuinely different purpose, weighed against its commercial character as a matter of degree.
In 2023 the Supreme Court's Warhol decision tightened that analysis where a secondary use substitutes for the original's own licensing market.

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IP-10 · 05

Patent Marking, Virtual Marking, and the Damages Consequence

9 MIN · IP

Marking is a housekeeping task with a seven-figure consequence. Without it, a patentee's damages often start at the demand letter or the complaint rather than at first infringement.

Where a patented product is sold, marking is a precondition to recovering damages for infringement occurring before actual notice was given.
Virtual marking is permitted: the word patent plus a web address that associates the article with the relevant patent numbers.
Claims to a method alone carry no marking duty, because there is no article to mark; mixed patents follow what is asserted and sold.

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