IP Portfolio Development and Management
Decades of experience in prosecution (patent, trademark, design), USPTO proceedings, IP rights procurement, portfolio management, and licensing.
Former Patent Examiner (1982-1986) 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.
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.
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.
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.