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Intellectual Property Patent Attorney Expert Witness

Provides Opinion & Testimony In:

Intellectual property, business law, executive management, business strategy, business operations, patent applications, patents, patentability, infrigement, patent trademark portfolios, patent infrigement suits, business development, telecommunications, digital analog systems, computer processors, microcircuits, software programs, intellectual property strategies, commercial government contracts, copyright, trademark, trade secrets, property litigation, software, software contracts, software licensing, software protection

Expert Witness No.2467

California

Professional Summary: 
 
Private Law Practice

Legal and business adviser to high tech, life sciences, industrial, commercial and financial businesses, media creators, and entrepreneurs.

Frequent speaker before professional, technical, and academic organizations and presents CLE
(continuing legal education) classes.
 
Provides established companies and start-ups with clear legal advice on which sound business
decisions may be based. This expert has extensive in-house experience working with line and
executive management to solve operating and sintrategic problems as well as operating management experience. 
 
Works with businesses to develop smooth operating relationships with upper and lower tier
contractors. Contracts are written to define complex requirements and establish operating
relationships to foster optimum performance and minimize the potential for disputes. Additional
areas include government contracts, licensing, technology business deals, and software development, and exploitation and enforcement of intellectual property rights.  
 
This expert has written and prosecuted hundreds of patent applications, prepared patentability and infringement opinions, had worldwide responsibility for patent and trademark portfolios of public companies, and litigated patent infringement suits. 
 
Government contracts experience includes work with upper and lower tier contractors and with the
Department of Defense, NASA, Department of Energy, state governments, British and Australian
Ministries of Defense, Canadian Department of National Defense and other agencies. 
 
Technologies include electronics, telecommunications, digital and analog systems, computer
processors, microcircuits, software programs and architectures, the Internet, medical devices,
business methods and sophisticated mechanical devices.

This expert has over 30 years of experience in the business of developing, using, transferring, and
exploiting intellectual property. As in-house counsel, he has counseled operating personnel and top
management in achieving business objectives and resolving disputes in virtually all scenarios
regarding intellectual property and business.

These include:

Identifying newly developed intellectual property

Examining alternative forms and cost justification of protection formulation of intellectual property strategies

Preparing and prosecuting patent applications and mentoring younger attorneys

Establishing processes to protect trade secrets and to avoid inadvertent assumption of obligation
to protect the information of others

Preparing and negotiating commercial and government contracts and subcontracts

Evaluation of potential patent, trademark, trade secret, and copyright opportunities and potential
conflicts

Negotiation of joint research agreements

Pre-litigation dispute resolution in the areas of patent infringement, copyright infringement, trade secret misappropriation

Licensing and technology transfer

Management of worldwide patent and trademark portfolios

Software development contracts, software licensing, and software protection

Advising management as to cost-justification of enforcement action 

Intellectual property litigation
 

Previous Employment:

California 2003 to 2008
Partner, Law Practice 

New York 1999 to 2001
Intellectual Property Counsel
Two billion dollar international business in postal automation, systems integration, and aerospace
electronics

Massachusetts 1984 to 1997
Chief Patent Counsel
Fortune 200 company with diversified high technology operations on all seven continents

Texas 1976 to 1981
Director of Regulatory Affairs, Patent Counsel
In vitro diagnostic instruments and reagents
 

Education:

B.E. degree in Electrical Engineering; The Cooper Union; New York City; 1966.
The Cooper Union, founded in 1859, is a privately endowed, tuition free institution.

Juris Doctor Degree; George Washington University National Law Center; 1970

Newsletter Summer 2013

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