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Understanding the Intellectual Property License 2014

 
Author(s): Marcelo Halpern, Joseph Yang, Susan Progoff
Practice Area: Intellectual Property
Published: Dec 2014
PLI Item #: 50564
CHB Spine #: G1202, G1203

SUE HELPS CLIENTS FIND PRAGMATIC, BUSINESS-ORIENTED SOLUTIONS TO CRITICAL TRADEMARK, COPYRIGHT, FALSE ADVERTISING AND UNFAIR COMEPTITION PROBLEMS.

Sue is a nationally recognized expert on all facets of trademark, copyright and related unfair competition law.  She has handled all aspects of these areas of the law, including major litigation and major transactions.

Sue is an experienced litigator who has handled many trademark, trade dress, copyright, false advertising, domain name, keyword and other Internet disputes and unfair competition matters, some of which have made new law.  She has acted as lead counsel in suits for such clients as Carter's, Lever Brothers Company, Snapple Beverage Corp., Toy Manufacturers of America, Inc., The Coca-Cola Company, Ford Motor Company, Burberry Limited, Bell's Brewery, Inc., Purdue Pharma L.P., Huntsman Gay Capital Partners and Half the Sky Foundation. She has also designed and implemented anti-counterfeiting programs for clients in such diverse fields as fashion and accessories, semiconductor chips and automotive parts, and represented clients in a multitude of industries in oppositions and cancellation proceedings in the United States Patent and Trademark Office and in ADR proceedings.

In addition to her extensive experience in contested proceedings, Sue brings a pragmatic approach to trademark clearance, prosecution and enforcement in the United States and internationally.  She applies a litigator’s perspective to helping clients minimize the risk of receiving a third party’s objection to the adoption of new marks, while also creating strategies for building brands that strengthen the client’s ability to enforce its rights against infringers.  She has also handled the trademark and copyright aspects of many complex corporate transactions that have depended on the parties’ intellectual property rights, and advised clients on designing and implementing trademark and copyright licensing programs.

Honors

  • Best Lawyers in America (2011-present)
  • World Trademark Review 1000 Band 1 (non-contentious); Band 2 (contentious) (2011 - present)
  • Expert Guide's Best of the Best (2005 - present), Trademark Law(one of top 30 trademark practitioners in U.S.)
  • Expert’s Guide to the World’s Leading Trademark Lawyers (2005-present)
  • Expert's Guide to the World's Leading Women in Business Law (2010 - present)
  • Euromoney's Guide to the World's Leading Trademark Law Practitioners (2001 - present)

Professional Activities

  • International Trademark Association
  • Copyright Society of the United States
  • American Bar Association
  • Association of the Bar of the City of NewYork
  • New York Intellectual Property Law Association (Board member 2009-2012)


Marcelo Halpern is a partner with the firm's Business group and is co-chair of the firm’s national Technology Transactions & Privacy group.  Marcelo's practice focuses on transactional and strategic matters involving the development, deployment and distribution of technology.  His clients include 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; hosting, cloud computing and software services agreements; data analytics and contract licensing; 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.

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


Joseph Yang is a partner at PatentEsque Law Group, LLP

Joe specializes in structuring and negotiating patent/tech- centric deals (especially licensing and joint ventures), and in the use of IP as strategic business assets.  He has been lead counsel on hundreds of deals involving tens of billions of dollars in value – across the computer/software/electronics, semiconductor, entertainment, consumer goods, manufacturing and healthcare industries.  Joe has also been an arbitrator, overseen patent litigation, led development of corporate patent portfolios, and served as an expert witness in the area of patent licensing. 

Joe is also currently a Lecturer in Law at Stanford Law School, where he co-teaches the "Patent and Technology Licensing" course.  He previously co-taught the “Patent Law and Policy” course as an adjunct faculty member at U.C. Berkeley School of Law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (now part of Rambus Inc.), playing a key role in developing and implementing a patent licensing program under which more than 8 billion devices a year are currently being made by the company’s licensees worldwide in the smartcard, semiconductor, pay TV, printer and other industries, as well as developing and managing the company's patent portfolio.

Joe is a recognized authority on IP law.  He has been named one of the “World’s Leading IP Strategists” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management magazine, and is profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America”, and “Marquis Who’s Who in the World”.  Joe co-chairs the “Advanced Patent Licensing,” “Advanced Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago.  He has written for journals and books, and been cited by U.S. federal courts and treatises, on patent and licensing law. 

Before PatentEsque Law Group, Joe co-founded and later led the IP Strategy & Transactions practice based in the Silicon Valley office of the multinational law firm Skadden, Arps, Slate, Meagher & Flom LLP.  Before that, he was at other New York- and California-based law firms.  In his early career, Joe was a research engineer in the aerospace and energy industries.  He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he is a board member of the Caltech Associates, and previously served on the board of the Caltech Alumni Association.