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Understanding the Intellectual Property License 2013

 
Author(s): Susan Progoff, Marcelo Halpern, Joseph Yang
Practice Area: Intellectual Property
Published: Nov 2013
PLI Item #: 42635
CHB Spine #: G1155

Joseph Yang is a partner at PatentEsque Law Group, LLP, where he specializes in the use of patent licensing and technology transactions (including R&D, licensing, manufacturing, JVs and IP aspects of M&A) in areas such as semiconductors, software, digital entertainment, athletics/health/fitness, medical devices and renewable energy).  He also has experience in patent strategy, portfolio management, litigation oversight, and has served as an arbitrator.

Joe previously served as VP & General Counsel of Cryptography Research, Inc., until its acquisition by Rambus Inc.  Before that, he was Counsel at Skadden Arps, where he co-founded and later led the IP transactions practice in Palo Alto.  

Here at PLI, Joe co-chairs the annual "Understanding the IP License," "Advanced Licensing Agreements" and " Patent Licensing Today" programs.  Joe has written a chapter on "IP Strategy in Joint Ventures" for the book "Start-Up & Emerging Companies”, as well as for and various journals, and he has been cited in court decisions and treatises.  Joe co-teaches the "Patent and Technology Licensing" course at Stanford Law School, and has previously co-taught "Patent Law & Policy" at U.C. Berkeley School of Law as an adjunct faculty member.

Joe has been named one of the “World’s Leading IP Strategists” and “World’s Leading IP & Technology Licensing Lawyers”, both by Intellectual Asset Management magazine.  He is also listed in Marquis’ Who’s Who in America and Marquis’ Who’s Who in American Law.  Joe holds a J.D. from Stanford and a Ph.D. in engineering from Caltech, where he has served on the Boards of the Caltech Alumni Association, and the Caltech Associates.  Before becoming an attorney, he was a research engineer in the defense and energy industries. 

Joe can be reached at joe@patentesque.com or 650-233-0822(O).


Marcelo Halpern is a partner with the firm's Business practice and a member of the Technology Transactions & Privacy group.  Marcelo's practice focuses on transactional, strategic and corporate representation of global "FORTUNE 100" companies, start-up and emerging growth companies, as well as U.S.-based and international governments and non-profits. His experience includes structuring and negotiating technology and intellectual property-oriented strategic alliances and joint ventures; software, data and content licensing; outsourcing and ERP implementation transactions; counseling on digital strategy concerns including open source licensing, data security, data use and privacy issues (including HIPAA, GLB and cross-border data privacy issues); hosting, cloud computing and software services agreements; Internet exchanges and marketplaces; Internet advertising and sponsorship agreements; research and development transactions; private labeling, co-branding and other marketing and distribution strategies; and intellectual property and technology issues arising in the context of mergers and acquisitions, financing and bankruptcy transactions. Marcelo also provides general corporate representation to software, consulting, Internet, e-commerce and technology companies.

Education

  • Columbia University School of Law, J.D., 1992
  • Columbia University, Graduate School of Business, M.B.A., 1992
  • Wesleyan University, B.A., 1985

Professional Recognition

  • Chambers' USA Guide to Leading Business Lawyers, 2004 - present 
  • The Best Lawyers in America, 2006 - Present(2016 Technology Law "Lawyer of the Year" for Chicago)
  • Illinois Leading Lawyers Network, 2004 - present 
  • Legal 500, Leading Lawyer, 2005 - present

Professional Leadership

  • Practising Law Institute, Understanding the Intellectual Property License program, Chair
  • Illinois Legal Aid Online, Board of Directors, Immediate Past President
  • International Technology Law Association (ITechLaw), Membership Committee, Local Representative 
  • American Bar Association, Science and Technology Section, Member
  • Illinois State Bar Association, Member
  • Chicago Bar Association, Computer Law Committee, Member


Position/Title: Trademark Partner

Firm or Place of Business:  Dorsey & Whitney LLP

Primary Areas of Practice:  Trademark, Copyright and Unfair Competition Law

Law School/Graduate School:

Pittsburgh School of Law

University of Florida

Work History:  

Professional Memberships:

  • International Trademark Association
  • Copyright Society of the United States
  • American Bar Association
  • Association of the Bar of the City of New York (Past Chair and member, Committee on Trademarks and Unfair Competition; current member, Committee on Copyrights and LiteraryProperty)
  • New York Intellectual Property Law Association
  • New York State Bar Association
  • Co-Chair, PLI's Annual Program on Understanding the Intellectual Property License, 1997-present