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Dominic Frisina

Partner

Buckingham Doolittle & Burroughs LLC

Dominic Frisina is a partner in the intellectual property practice at Buckingham Doolittle & Burroughs LLC. Attorney Frisina is a specialist in patent and trademark law, having prosecuted hundreds of chemical, electrical, and software cases. His practice encompasses preparation and prosecution, licensing, and litigation matters.

He is a full-service IP attorney with a strong background in matters relating to chemical and materials science arts, mechanical inventions, software inventions and electrical cases. He often works with small businesses and entrepreneurs who need to protect their ideas and innovations and works closely with clients to fully understand the underlying technology of their inventions to be able to provide them with most complete protection.

Recent Articles by Dominic Frisina

After Amgen: What SCOTUS Said—and Didn’t Say—About Enabling a Claim’s Full Scope

The Supreme Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s longstanding requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions with such clarity and specificity as to enable one skilled in the art to make and use the claimed invention. Moreover, the Court has consistently held that a patent fails to satisfy the enablement requirement if a person having ordinary skill must engage in undue experimentation to practice the claimed invention. The Federal Circuit has gone a step further, requiring that patents enable the full scope of a claimed invention. Amgen is a ratification of this aspect of the Federal Circuit’s enablement jurisprudence.

Recapping Abitron at the High Court: The Long Arm of the…Lanham Act?

Can the Lanham Act apply to the conduct of foreign entities occurring entirely outside the United States and, if so, what is the test? The Supreme Court will soon decide this issue in Abitron v. Hetronic, potentially resolving a long-standing circuit split where six different tests presently co-exist. It will mark the first time since the Court’s 1952 ruling in Steele v. Bulova Watch Co. that it has spoken on extraterritoriality as it relates to the Lanham Act. Steele found that the Lanham Act does apply to a U.S. citizen using a registered U.S. trademark on spurious Bulova watches, many of which were bought by U.S. citizens in Mexico and brought back to the United States. Steele did not address whether the defendant’s U.S. citizenship, or his sourcing of parts from U.S. suppliers, were necessary conditions to subject matter jurisdiction. Enter Hetronic.