BEDNAREK
LEGAL
Specializing in Global Intellectual Property Strategy, Prosecution, Counseling & Litigation
PRACTICE
AREAS
IP Portfolio Development and Management
Decades of experience in prosecution (patent, trademark, design), USPTO proceedings, IP rights procurement, portfolio management, and licensing.
Patent Prosecution
Former Patent Examiner in computer controlled automotive components arts (Class 74). Since 1986 personally procured more than 1,000 patents for a wide range of clients in a broad range of technologies. Recruited and managed a team of patent prosecutors handling cases related to software and communication. Managed international patent portfolios, with rights in most developed countries. Authored a series of widely articles on comparative patent and trademark value.
Licensing
Earned the designation CLP (Certified Licensing Professional) from the Licensing Executives Society based on extensive experience in portfolio management and licensing, cross licensing, patent pools, open source software and IP components of business process outsourcing agreements.
IP Litigation
Lead counsel in District Court, AAA arbitration and U.S.ITC litigation in cases involving utility and design patents, trademarks. copyrights, trade secrets and false advertising challenges before the National Advertising Division (NAD) and the National Advertising Review Board (NARB). Extensive experience preparing and defending foreign witnesses for deposition. Participated in proceedings and provided expert testimony in other countries.
Global IP Strategy and Counseling
Working with an extensive international network to handle IP matters in all leading economies of the world. Has spent years (collectively) in Asia (especially Japan, Taiwan and China) and Europe since the late 1980’s. Managed the Taiwan office of an international law firm. Extensive international network. Chambers Global: Top Legal Advisors (Asia Guide) Litigation and licensing experience in Asia (Japan, Taiwan, China, Philippines) and Europe (Switzerland, Belgium, Germany, Poland).Managed worldwide IP portfolios covering most countries, particularly deep expertise in China, Japan, Taiwan, Switzerland, Germany and Poland.
About Michael
A recognized expert in Global IP strategy, Michael has represented some of the world’s largest technology and financial services companies in patent and intellectual property litigation in the United States. Listed in Chambers Global as a Leader in Their Field, Michael has more than 30 years of experience in intellectual property law, where he focuses his practice on global IP strategic counseling, patent, trade secret, trademark and copyright litigation, USPTO proceedings, IP rights procurement, portfolio management and licensing. In addition, he has experience in outsourcing, antitrust, data protection, advertising and emerging companies, and had extensive global experience with stints in Asia and Europe.
Michael regularly advises clients across a broad spectrum of industries, including toys and games, information technology, medical devices, software, consumer electronics, computer, automotive and financial services, on their global patent strategies. He was an early proponent of patent protection in non-traditional fields as varied as retail, transportation and hospitality, and he continues to be a thought leader on the design and implementation of worldwide intellectual property strategies.
Bar Admission & Certifications
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District of Columbia
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Virginia
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Maryland
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United States Supreme Court
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United States Patent and Trademark Office
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LES Certified Licensing Professional (CLP)
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D.C. Circuit
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Fourth Circuit
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Federal Circuit
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Eastern District of Texas
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Eastern District of Virginia
Professional Recognition
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Lecturer: ETH-Zurich
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Lecturer: International Law Association
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Chambers Global (Leaders in their Field)
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Earned the highest possible Martindale-Hubbell Peer Review Rating
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Benchmark Litigation
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The World's 250 Leading IP Strategists (IAM magazine)
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Chambers and Partners Top Legal Advisors (Asia Guide)
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Leading IP Lawyers in the US (Legal 500)
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World’s Leading Patent Law Experts (Euromoney & Legal Media)
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World’s Leading Patent Trademark Law Experts (Euromoney)
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Hot 100 Lawyers list for Asia (Asian Legal Business – acknowledging Mr. Bednarek’s work in Greater China)
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Washington, D.C. Super Lawyers (Law & Politics)
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Virginia Super Lawyers (Law & Politics)
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"Legal Elite” (Virginia Business Magazine)
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