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Intellectual Property Assist in all aspects of intellectual property litigation. Preparation for and assist lead trial counsel at intellectual property/antitrust jury trial. Prepare and answer complaints. Draft motions and memoranda of law in support of the motions. Preparation and answering of discovery requests. Preparation for and second seat depositions. Research and write opinion letters and office memorandum. Draft and prosecute patent applications before the United States Patent and Trademark Office. Instruct foreign concerning prosecution of foreign patent applications. Client contact regarding both prosecution and litigation matters. Wrote appellate briefs. Research issues involving patent, antitrust, copyright, and procedural law. Participated in major international litigation projects for top Fortune 500 companies; drafted and prosecuted several computer software and mechanical patents; drafted licensing agreements for hardware and software asset purchase; defended witnesses in several depositions; mediated computer software dispute; investigated corporate employees for computer software piracy; completed research projects in numerous facets of patent law and trade secret law; drafted discovery pleadings; prepared memoranda for and against summary judgment motions; provided discovery support including: privilege log maintenance. Work on all aspects of domestic and foreign trademark prosecution, including trademark searches and clearance, responding to Office Actions in the United States Patent and Trademark Office, and litigating oppositions and other proceedings before the Trademark Trial and Appeal Board. Designated to work in-house in trademark division of multinational pharmaceutical company client. Advise sports, entertainment, pharmaceutical and health care industry clients regarding protection and enforcement of trademark and copyright rights, and advertising pre-clearance. Draft and review trademark and copyright consent and licensing agreements. Conduct due diligence on intellectual property aspects of corporate transactions. Perform legal research and draft memoranda and opinions on trademark, unfair competition, false advertising, copyright and patent law issues. Responsibilities include: Drafting and negotiating merger agreement from an intellectual property perspective, including representations and warranties; conducting intellectual property audit and due diligence in non-hostile acquisition; drafting motions, pleadings, memorandum of law, briefs, interrogatories, discovery documents, patent non-infringement and invalidity opinions; drafting and negotiating settlement agreements which include among other agreements, licensing agreements and proprietary agreements; defending depositions; litigation in federal courts and International Trade Commission; interference proceedings in Patent and Trademark Office; and extensive client and co-counsel contact. Experience in general corporate, mergers & acquisitions, intellectual property and securities law, including: representing venture capital firm in acquisitions and private placements of limited partnership interests; preparing corporate, limited liability company and limited partnership documents, including bylaws, operating agreements, partnership agreements and resolutions; serving as purchaser's counsel for leveraged buyout of agricultural feed business; representing media conglomerate in asset purchase of a major city newspaper; serving as purchaser's counsel for acquisition of financial information services provider and as seller's counsel for subsequent sale of same business; drafting co-branding and distribution agreements for health news segments to be broadcast on cable network and the Internet; reviewing and preparing securities filings, including Forms S-3 and 13D, proxy statements, tender offer documents and blue sky filings; drafting agreements, including stock purchase agreements, merger agreements, asset purchase agreements, warrant purchase agreements, note purchase agreements, stockholders agreements, registration rights agreements, non-competition agreements, confidentiality agreements, employment agreements, letters of intent, trademark licenses, agency agreements, software development agreements, software license agreements, distribution agreements, escrow agreements and maintenance agreements; conducting due diligence reviews and drafting related reports; interviewing and preparing applications for French-speaking political asylum applicants; and extensive client contact and matter responsibility. Advise new and existing clients on business and legal issues related to Internet and online ventures: draft, negotiate, and review Web site development, hosting, and maintenance agreements, online area development agreements, online advertising agreements, joint venture agreements, confidentiality and technology sharing agreements, service agreements, Internet access provider agreements, Weblink agreements, and Webmaster license agreements. Draft, negotiate, and review computer and new technology related agreements, including software licenses, development and support agreements, CD-ROM development agreements, and high definition volumetric display prototype agreements. Drafted several corporate Internet-use policies. Prepared and assisted senior litigators in depositions of expert witnesses on technical issues. Also involved in trademark filings with the PTO and several domain name disputes. Guest lecturer on Internet law at Fordham University School of Law. Assisted in the preparation of several New York Law Journal columns and various seminar papers. Monthly columnist for the Multimedia Strategist. |
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