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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, 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).