Category Archives: Treatise Update

Treatise Update – How to Write a Patent Application (Third Edition)

The third edition of How to Write a Patent Applicationwalks you step-by-step through the entire process of preparing patent applications.  Completely up-to-date, it is stocked with sample drafting language, documents, drawings, and checklists.  In addition to providing practical suggestions and commentary, the book analyzes the latest USPTO initiatives and key decisions of the federal courts.

New or updated topics addressed in this release include:

  • Assignments: For a discussion of (1) the extent to which an employer can rely on an assignment clause to assert an ownership interest in a patent that was obtained after employment and (2) how to make an assignment effective for the doctrine of assignor estoppel, see section 2:3.3.
  • Translations: For an example of the indefiniteness issues that translation into English can create and ways to avoid a finding of invalidity due to mistranslation, see sections 2:8 and 8:6.4.
  • Abstract ideas: New examples of inventions that the Federal Circuit held were abstract ideas have been added to section 7:4.1[B]. A recommendation for drafting specifications and claims for inventions using blockchain technology to avoid abstractness is included in section 7:4.6.
  • Enablement: To see how the use of functional language can make satisfaction of the enablement test more difficult, especially for biotech inventions, see sections 8:3.5[A] and 9:3.2[A]. What’s more, the need to clearly distinguish between prophetic examples that describe predicted experimental results and working examples is explained in section 9:3.2.
  • Appendix B (selected regulations), the Table of Authorities, and the Index have also been updated.

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Treatise Update – International Tax & Estate Planning: A Practical Guide for Multinational Investors (Third Edition)

In International Tax & Estate Planning: A Practical Guide for Multinational Investors (Third Edition), one of the nation’s leading multinational investment authorities presents a clear and practical approach to managing and disposing of private wealth.  Featuring detailed planning checklists and formulas for calculating taxes and tax credits, the treatise is an indispensable resource for lawyers, private bankers (both investment and commercial), corporate personnel of multinational corporations, accountants, and investment advisers.

The twenty-fourth release of the book provides updated practical information that enables multinational investors (and those who advise them) to protect investments, minimize taxation, maintain confidentiality, and assure proper disposition of assets upon an investor’s death.

Specifically, the latest iteration of the book includes:

  • A revised Chapter 1, Conflict of Laws, which explores topics including the definition of domicile in various states and countries, and revisions to, and ratification of, the Convention on the Conflicts of Laws Relating to the Form of Testamentary Dispositions.

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Treatise Update – Derivatives Deskbook: Close-Out Netting, Risk Mitigation, Litigation (Second Edition)

Derivatives Deskbook: Close-Out Netting, Risk Mitigation, Litigation is a comprehensive resource for all users of swap agreements and derivatives, from financial institutions to corporate end-users. The treatise defines the key terminology and identifies the major players, discusses the full range of required documentation, highlights best practices for the legal risk management of derivatives, and includes numerous practice-tested legal forms. Most importantly, it examines all significant, and often difficult-to-find, derivative transactions litigation cases from leading jurisdictions worldwide.

Highlights of this new release include:

  • Expanded section 1:1 explains the repercussions of the Texas energy crisis that occurred in February 2021, particularly with regard to how it relates to corporate end-users of derivative transactions.
  • Revised section 6:6.1 explores how additional termination events that are tied to the financial health of a counterparty could be specified conditions similar to having events of default as specified conditions.
  • Completely revised Chapter 9 examines the Dodd-Frank Act, EMIR, and MiFid II, and their implications on the OTC derivatives market in light of the 2020 revisions to Commodities Futures Trading Commission regulations.

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Treatise Update – Electronic Discovery Deskbook (Third Edition)

Electronic Discovery Deskbook guides attorneys through the legal, procedural, and technical challenges of e-discovery while reducing its costs and risks. The Deskbook aids in developing cost-effective, legally defensible information and litigation management policies and procedures for the identification, preservation, collection, preparation, and production of discoverable, electronically-stored information (ESI).  It offers a bounty of useful tips and alerts readers to vital trends, focusing on new technologies, new compliance demands, and new legal vulnerabilities for counsel.

Updated chapters reflect the latest cases, legislation, guidance, and commentary pertaining to electronic discovery. Highlights of the new release include:

  • Mobile and wearable technologies: The new §13:2.4 discusses litigation on the issue of whether, for purposes of ESI, an organization has “control” over devices used by its employees.  It provides guidance on how employers may avoid or limit the need to collect data from such devices, regardless of whether they are provided by the employer or the employee.
  • International Laws: Chapter 14 International Issues includes the most recent developments outside of the United States pertaining to electronic discovery.

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Treatise Update – Deskbook on Internal Investigations, Corporate Compliance, and White Collar Issues (Second Edition)

Deskbook on Internal Investigations, Corporate Compliance, and White Collar Issues is a vital reference for attorneys, executives, compliance officers, securities professionals, and regulators that examines the regulatory and criminal issues that can arise in a corporate setting. It offers guidance on how to build a comprehensive compliance program that can prevent legal missteps, carry out internal investigations to identify and remediate legal problems, protect the rights of employees when they are subject to investigation or prosecution, and cooperate with government investigators in ways that help reduce legal and financial damage if wrongdoing is proved.

All chapters are updated to reflect the most recent trends and specific high-profile DOJ investigations, settlements, and actions. Highlights of the new release include:

  • Filter Teams: A new section discusses the government’s use of “filter teams” to review seized records that may contain attorney-client privileged communications and/or work product. Courts have issued disparate opinions on whether the practice is proper (see § 2:8).
  • DPAs: A new section presents likely changes within the Biden administration regarding the use of DPAs based on activities and statements of President Biden, Attorney General Garland, and several other recent DOJ appointees (see § 9:3.3). Another new section discusses recent congressional activity pertaining to DPAs, specifically the 2021 National Defense Authorization Act and the VOCA Fix to Sustain the Crime Victims Fund Act of 2021 (see § 9:3.4).
  • Antitrust Investigations: New subsections discuss additional current ongoing Antitrust Division investigations: collusion in the broiler chicken industry as part of the Division’s larger interest in how conspiracy affects household staples (see § 12:4.3[B]); matters, both domestic and international, pursued by the DOJ’s Procurement Collusion Strike Force (see § 12:4.3[C]); and labor market prosecutions involving agreements among employers that constrain the terms of hiring or employment in violation of the Sherman Act (see § 12:4.3[D]).

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Treatise Update – Kane on Trademark Law: A Practitioner’s Guide (Seventh Edition)

Kane on Trademark Law is a comprehensive resource on trademark law and tactics that provides court-tested practical suggestions on how to quickly spot potential conflicts and save time on searches, overcome common descriptiveness rejections, update or amend registrations, and prepare witnesses for depositions. It includes illustrative lists of cases, full-color illustrations of previously litigated marks, sample forms, and step-by-step checklists. The treatise is updated regularly to provide in-depth analysis of the most recent developments in the field.

The new release provides expert analysis and practical insights regarding a wide range of trademark issues. Topics of interest include:

  • Trademark selection: Highlights comprise cases from the Second Circuit and the TTAB on color protection (see Sulzer Mixpac AG v. A&N Trading Co. in § 2:10.2[B] and In re Medline Industries, Inc. in § 2:10.4 and App. B, Illustration 67).
  • Trademark registration: Revisions include an update to the Booking.com case regarding the expenses that an appealing party in an ex parte appeal must pay when appealing to the district court (see § 6:6.1[B]) and a precedential case from the TTAB on the registrability of a mark that includes a depiction of the U.S. flag (In re Alabama Tourism Department) (see § 6:5.2).
  • Trademark use and priority: For an update on the PRETZEL CRISPS dispute and a decision from the district court on issues of genericness and consumer confusion, see § 5:3.3.
  • Initial interest confusion: Consult § 8:1.1[A] for The Eighth Circuit’s blessing of the initial interest confusion doctrine in Select Comfort.
  • Infringement: See § 8:3.4 for an update to a Second Circuit case on landlord liability for a tenant’s counterfeiting (Omega SA v. 375 Canal, LLC).
  • Defenses to infringement: There is a new section on upcycling and repairs with citations to the Nike Satan shoes case and the Hamilton watch case (see § 12:1.5 and App. B, Illustration 68).
  • Costs: For a discussion about the significant costs of losing on appeal, see § 18:7.
  • Fraud: Go to §§12:2.6[G] and 19:2.2[B] for the TTAB’s ruling in a precedential decision about whether conduct amounting to reckless disregard constitutes fraud on the PTO as a matter of law.

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Treatise Update – Holtzschue on Real Estate Contracts and Closings (3rd Edition)

Holtzschue on Real Estate Contracts and Closings:A Step-by-Step Guide to Buying and Selling Real Estate is an invaluable resource for attorneys and general practitioners who handle real estate deals as well as an important reference for brokers, title insurers, and inspectors.  It distills more than thirty years of transactional experience into one plain-English treatise that clearly explains governing law and customary industry practices.  The book provides useful legal, technical, and strategic guidance and checklists for sellers’ and purchasers’ attorneys preparing them to execute dispute-free residential deals quickly and easily.

This new release offers the latest information crucial to your practice.  Highlights include:

In addition, the Table of Authorities and Index have been updated to reflect the latest revisions.

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Treatise Update – Langer on Practical International Tax Planning (Fifth Edition)

Langer on Practical International Tax Planning gives you the latest news on the legal, tax, business, financial, social, political, technological, geographical, and regional factors to consider when developing and implementing customized planning strategies for clients. It is an invaluable tool for tax and estate planners, tax attorneys, accountants, and sophisticated investors.

This new release updates the treatise with up-to-date practical information and analysis to help preserve your clients’ assets. Highlights include:

  • Revised section 20:9, Abusive Transactions, explores the difference between “forfeiture” and “restitution,” pointing out that the two items have different purposes.
  • Revised section 38:1.3[F], No Reduction for Deductions or Expenses, discusses final regulations issued in January 2021 providing additional guidance regarding the limitation on the deduction for business interest expense under section 163(j); specifically, the regulations address the application of the limitation in contexts involving passthrough entities, regulated investment companies (RICs), and controlled foreign corporations.
  • New section 43:2.2[B], Microcaptive Insurance Companies, examines the four-part test used by the Tax Court to determine whether these arrangements actually constitute deductible “insurance” (that is, as involving risk-shifting, risk-distribution, insurance risk, and whether the arrangement “looks like” commonly accepted notions of insurance).

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Treatise Update – Directors’ and Officers’ Liability: Current Law, Recent Developments, Emerging Issues (Third Edition)

Directors’ and Officers’ Liability is a vital treatise for corporate counsel, private practitioners, and directors and officers which provides a straightforward explanation of the obligations of directors and officers of public companies, the penalties they face if they fail to meet their obligations, and the protections that are offered them under the law or by agreement. 

The book covers the key facets of board committees; the duties of directors and officers under state corporate law and federal and state securities laws; private civil actions and public enforcement; exculpation, indemnity, and insurance; cybersecurity; contested mergers and acquisitions; Securities Act suits filed in state court; special issues in pharma and biotech; and more.

Highlights of the new release include:

  • Gender and Ethnic Diversity of Boards. State legislatures, courts, proxy advisory firms, and stock exchanges have all recently weighed in on requiring boards to maintain certain levels of diversity. See §§ 1:10 and 2:3.3[C] for discussion of the latest developments.
  • Caremark Claims. Hughes v. Hu and Teamsters Local 443 Health Services & Insurance Plan v. John G. Chou are the latest in a string of recent decisions from the Delaware Court of Chancery interpreting and applying Caremark. See §§ 3:3.14, 8:8.3, and 8:8.4 for detailed analysis.

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Treatise Update: Patent Licensing and Selling

Patent Licensing and Selling (Second Edition) offers complete and practical guidance for drafting, reviewing, and negotiating solid patent license agreements. Whether representing licensors of licensees, readers learn how to draft fair and litigation-free patent license and patent purchase agreements that serve clients’ interests, satisfy other parties, and shield clients from legal exposure.

Author Mark Holmes has revised and expanded the text and added useful new commentary on the following:

  • Licensee’s right to independent development: Licensors might wish to temper their granting of independent development rights with the condition that the licensee not diminish its efforts to market and sell the licensor’s products. See new § 2:11.
  • Compulsory licenses: Licensees that have already entered into license agreements with the patent owner will want to make sure that, if compulsory licensing is invoked, they are not paying a royalty rate higher than the compulsory rate. See new § 4:11.
  • Maintenance and prosecution costs: The license agreement might require the licensee to pay prosecution and maintenance fees. What if the licensor can dictate in which countries patents will be prosecuted and maintained? What is to protect the licensee from being forced to pay for prosecution and maintenance in countries in which there is likely little commercial interest in licensed products? See new § 6:3 for a discussion of how a licensee can protect itself from such perceived licensor abuse.
  • Indemnification by statute: In some states, if the license agreement is silent on indemnification, the issue may be addressed by statute, but the statutory obligation can be broad. See §§ 8:3.1 to 8:4 for a discussion of this important topic.
  • Arbitrator discretion: If you seek to limit discovery in an arbitration, beware of language that allows the arbitrator to deviate from the precisely stated limitations of discovery. See new § 14:9.1.
  • Force majeure: For a discussion of force majeure in the age of COVID-19, see § 15:10.2.
  • New contract provisions: This release includes the following new provisions for possible inclusion in a license agreement: Examples 1:69 and 1:69A (Construction and Rules of construction); Example 1:136 (Force majeure carveout); Example 1:318A (Valid patent claim); Example 2:21B (Right to develop independently); Example 3:16 (Patent family); Example 4:50 (Compulsory license royalty); Example 6:8 (Licensee responsible for maintenance and prosecution; loses rights where turns prosecution and maintenance over to licensor); Example 6:27 (Patent markings indemnification); Example 6:43 (Patent markings not an admission); Examples 8:5 and 8:5A (Disclaimer of warranties); and Example 18:1 (Seller patent marking compliance).

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