Skip to main content

Understanding the Intellectual Property License 2013

 
Author(s): Joseph Yang, Susan Progoff, Marcelo Halpern
Practice Area: Intellectual Property
Published: Nov 2013
ISBN: 9781402421082
PLI Item #: 42635
CHB Spine #: G1155

Joseph Yang is an IP transactions partner at PatentEsque Law Group, LLP.

Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, JVs, patent licensing/sales, standards body issues, IP aspects of M&A) and in the use of IP as strategic business assets. He has led hundreds of deals involving billions of dollars in the computer, electronics, entertainment, consumer goods, healthcare, energy & manufacturing industries. Reflecting these diverse experiences, Joe often helps clients in cross-industry deals (e.g., IoT, SaaS & “big data” deals) with companies outside their own industry.

Joe also serves as an expert witness for high stakes patent & tech licensing disputes.

Joe teaches the "Patent and Technology Licensing" course at Stanford Law School, and has taught the “Patent Law and Policy” course at U.C. Berkeley School of Law. Joe is a long-time chair of the “Advanced Licensing,” “Advanced Patent Licensing” and “Understanding the IP License” courses at the Practising Law Institute in NYC, SF and Chicago. He has written for journals & books, and been cited by courts & treatises, on patent & licensing law.

Joe previously served as VP & General Counsel of Cryptography Research, Inc. (CRI), negotiating deals under which 10+ billion devices/year are made by its licensees in the smart card/phone, semiconductor, pay TV, printer & other fields. He also developed, enforced & defended CRI’s patent portfolio, and played a key role in CRI’s successful sale in a series of M&A deals (with Macrovision & Rambus) valued at $400+ million.

Before that, Joe co-founded and later led the “IP Strategy & Transactions” practice based in the Silicon Valley office of the world’s largest law firm (Skadden, Arps). He has also practiced at other large multinational law firms, and served as an arbitrator.

Joe is recognized as one of the “World’s Leading IP Strategists,” “World’s Leading Patent Professionals” and “World’s Leading IP & Technology Licensing Lawyers” by Intellectual Asset Management (IAM) publications. IAM named Joe as 1 of only 10 "highly recommended" IP transactional attorneys in all of California -- and the only one from a boutique (non-AmLaw 100) law firm. IAM states: “Joseph Yang is a major-league deal maker and licensing authority” as well as “a transactional mastermind with arbitration and litigation skills that make him a formidable negotiator.” “He … is a creative problem solver who can clearly articulate legal risks and provide effective advice to guide business decision making.” Joe was also profiled in “Marquis Who’s Who in American Law”, “Marquis Who’s Who in America” and “Marquis Who’s Who in the World”.

Joe was originally a research engineer in the aerospace & energy fields. He holds a J.D. from Stanford Law School and a Ph.D. (engineering) from the California Institute of Technology, where he has been a board member of the Caltech Associates & Caltech Alumni Association.

Contact Information: Joseph Yang, PatentEsque Law Group, LLP, 2440 Sand Hill Road, Suite 400, Menlo Park, CA 94025, joe@patentesque.com, 650-233-0822

 


Marcelo Halpern is the firmwide Co-Chair of Perkins Coie’s Technology Transactions & Privacy practice and focuses his practice on complex commercial transactions involving the development, deployment and distribution of technology in a wide variety of industries. Marcelo regularly works with clients in the blockchain industry, advising on technology and platform issues, structuring token offerings, digital currency issues, tokenization of assets, and the development and operation of blockchain based collaborative platforms. In addition, he has advised on the formation and operation of several blockchain consortiums. 

Marcelo provides practical counsel in connection with emerging technologies, including those related to big data analytics, artificial intelligence, fintech and blockchain, internet of things, smart cities, mobile, cloud computing and “as a service” platforms, hardware and e-commerce, as well as the overall interplay of interoperability, industry standards and IP licensing approaches. He has a strong focus on complex strategic alliances and licensing transactions, outsourcing and ERP implementation, digital strategies—including open source licensing, data security, data use and privacy issues—and other marketing and distribution strategies.

Marcelo counsels multinational FORTUNE 100 companies, startups, emerging growth companies, governments and nonprofits on structuring and negotiating collaboration, development, distribution, license and service agreements. He also frequently advises clients on intellectual property and technology issues arising in the context of mergers and acquisitions, industry alliances and consortia, joint venture arrangements, financings, data management and tech transfer transactions. 

Marcelo was honored by U.S. News - Best Lawyers as the Chicago “Lawyer of the Year” in the technology law category and has been listed since 2004 as one of “America’s Best Lawyers” for technology law by Chambers USA in its annual guide of leading business lawyers.

 


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.