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Patent Licensing Today 2014: Making Money Without Getting Sued

 
Author(s): Joseph Yang, Mark S. Holmes
Practice Area: Ethics/Professional Responsibility, Intellectual Property
Published: Nov 2014
PLI Item #: 51984
CHB Spine #: G1200

The founder and CEO of PatentBridge, Mark Holmes is a registered patent attorney experienced in all aspects of patent brokering and patent licensing. He has negotiated numerous patent deals, both inbound and outbound, as well as represented patent owners in the brokering of their patents. For half a decade from 2006 to 2011, Mr. Holmes served as co-chair Silicon Valley Chapter of LES (Licensing Executives Society).

Mr. Holmes has advised some of the largest companies and academic institutions in the world such as Visa, Sony, Applied Materials, Intergraph (in its settlement of Intergraph vs. Intel), University of California at Berkeley (Berkeley Lab), Biosite, Fairchild Semiconductor, Rigel Pharma and Yamanouchi Pharma, as well as sole inventors. He has been on both sides of the table -- as buyer and seller -- which has given him a unique understanding of both perspectives and the negotiating tactics employed by each party to the deal.

Mr. Holmes earned his engineering degree from Brown University. He is a member of the Institute of Electrical and Electronics Engineers (IEEE) and the IEEE Computer Society. Before founding PatentBridge, he served as counsel to Townsend & Townsend & Crew, formerly the largest intellectual property law firm west of the Mississippi.

Mr. Holmes is the author of the book Patent Licensing and Selling: Strategy, Negotiation & Forms, Practising Law Institute, New York (2000 supplemented annually). Please click the button entitled "Book" at the top of the screen for more information.

Mr. Holmes lectures nationally on the pressing issues facing patent owners in the commercialization of their intellectual property. In the past few years, he has spoken nationally over 50 times on the commercialization of intellectual property for such bodies as Renaissance Weekend, Practising Law Institute, International Society for Optical Engineering (SPIE), Patent Law Institute, Washington State Patent Law Association, Oregon Patent Law Association, Hawaii State Bar Association and other organizations.

He also serves as co-chair of the Practising Law Institute’s Advanced Patent Licensing annual program in New York, Chicago and San Francisco, where he speaks on software and patent deals.

He was a speaker on patents at the 2003, 2004 and 2008 Annual Meetings of the Licensing Executive Society (LES) and served on the meeting committee for the 2004 LES Winter Meeting in San Francisco. Since 2002, Mr. Holmes has been a member of the faculty of the Practising Law Institute’s “Advanced Licensing Agreements” annual two-day programs in San Francisco, Chicago and New York where he speaks on software licensing and the analysis of a complex technology deal.

He is the author of numerous articles and sits on the Board of Editorial Advisers for the Intellectual Property Counselor, published by West Publishing.


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.