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Patent & High Technology Licensing 2002

 
Author(s): Mark S. Holmes, Ethan Horwitz
Practice Area: Corporate & Securities, Intellectual Property, Professional Skills
Published: Jun 2002
PLI Item #: 366
CHB Spine #: G704

The founder and CEO of PatentBridge is Mark Holmes. Mr. 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.

 



The founder and CEO of PatentBridge is Mark Holmes. Mr. 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.1

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.


Ethan Horwitz
Partner

Law School / Graduate School: 

  • MS, New York University
  • JD, St. John's University

Work History: 
  • Senior Partner, Darby & Darby
  • Chair IP Group, Goodwin Proctor

Professional Memberships:  AIPLA, FICPI, AIPPI

Ethan Horwitz has over 25 years of experience in the full range of intellectual property.  He has advised clients and has litigated patent, trademark, trade dress, copyright and false advertising cases in the United States and internationally.

Mr. Horwitz has extensive experience in patent litigation in a variety of technologies and is listed in Euromoney's Guide to the World's Leading Experts in Patent Law. Mr. Horwitz is the author of the treatise Patent Litigation: Procedure and Tactics (3 volumes).

Mr. Horwitz has successfully litigated various trademark, trade dress, false advertising and dilution actions, including a number of landmark cases. He is listed in Euromoney's Guide to the World's Leading Experts in Trademark Law. Mr. Horwitz is the author of the treatise World Trademark Law & Practice (5 volumes).

Mr. Horwitz has represented both the creators of copyrights as well as accused infringers, in a number of landmark cases of first impression. He has extensive experience in copyrights relating to computer programs.

Mr. Horwitz is also the editor of Intellectual Property Counseling and Litigation (7 volumes), and is listed in the International Who's Who of Business Lawyers, in BestLawyers and in New York Superlawyers. He is also the author of numerous intellectual property articles and is a frequent lecturer around the world in intellectual property matters and co-chairs PLI's annual Advanced Patent  Licensing program.

Mr. Horwitz received his Bachelor of Science from Polytechnic Institute, his Master of Science from New York University and his Juris Doctorate from St. John's University School of Law. He is admitted to the New York State Bar , the U.S.P.T.O., the Federal Circuit, the Second Circuit and the United States Supreme Court.