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Handling Intellectual Property Issues in Business Transactions 2003

Author(s): James R Bramson, Charles W. Shifley, Eric A. Prager, Gary M. Hoffman, Edwin H. Taylor
Practice Area: Corporate & Securities, Intellectual Property, Professional Skills
Published: Mar 2003
PLI Item #: 511
CHB Spine #: G740

Eric A. Prager, a partner in the firm’s intellectual property practice group, assists clients with all types of intellectual property issues. His practice involves contentious and non-contentious engagements, including strategic counseling, due diligence of IP assets, sophisticated licensing and agreement work, and litigation. He has litigated copyright, false advertising, patent, trademark and trade secret cases in courts around the country, obtaining great results for plaintiffs and defendants.

With significant experience in the area of digital content distribution and protection, Mr. Prager represents one of the Big Four record companies and a major online subscription music service in their digital content matters.

Mr. Prager has assisted in drafting several “digital agenda” copyright treaties for the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations. These include the WIPO Copyright Treaty, the WIPO Performances and Phonograms Treaty, and a proposed treaty on the protection of databases.

He has served on the U.S. Patent and Trademark Office Public Advisory Committee for Trademark Affairs. He also assisted, as a member of the Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN), in developing the uniform dispute resolution policy that ICANN requires accredited registrars to follow.


Mr. Prager has practiced intellectual property law for more than 15 years. Prior to joining K&L Gates, he was a partner in the New York and Seattle offices of an intellectual property boutique law firm.


Mr. Prager co-chairs an annual two-day legal conference in New York, Handling Intellectual Property Issues in Business Transactions. He also co-chairs an annual two-day legal conference in Washington, D.C., Standard Setting & Patent Pools. He is a frequent lecturer and author on a variety of subjects in intellectual property law.


Model Railroad Case Supports Enforceability of Open Source Software Licenses and Provides Guidance for Licensors, World Intellectual Property Report, October 2008

Model Railroad Case Supports Enforceability of Open Source Software Licenses and Provides Guidance for Licensors, Licensing and e-Merging Commerce Alert, September 5, 2008


Mr. Prager serves on the adjunct faculty of Fordham Law School and is an active supporter of a number of New York arts organizations.


Bar of New York Bar of Washington
Supreme Court of the United States
United States Court of Appeals for the Federal Circuit


J.D., Fordham University School of Law, 1993, (Editor-in-Chief, Fordham Intellectual Property, Media & Entertainment Law Journal; Phi Kappa Phi National Honor Society; West Publishing Award for Outstanding Scholastic Achievement)
A.B., Columbia College, 1990


Mr. Prager has appeared as an on-air commentator on CNBC and MSNBC, and he is frequently quoted on intellectual property issues in a variety of legal and general interest publications. One of his published articles on trademark dilution has been cited by two U.S. Courts of Appeals and was relied upon by the government in its briefing to the U.S. Supreme Court in the Victoria’s Secret case, 537 U.S. 418 (2003).

The Puget Sound Business Journal named Mr. Prager a “40 Under 40” business leader in Seattle in 2006.




IP Procurement and Portfolio Management


Commercial Transactions and Outsourcing
Emerging Payment Systems
Food Industry
Interactive Entertainment
IP Litigation
Privacy, Data Protection and Information Management
Technology Transactions
Telecom, Media and Technology

Gary Hoffman chairs the Technology Group and the Intellectual Property Practice of Dickstein Shapiro LLP. He has been actively involved in the practice of intellectual property law for over thirty years and has participated in over 100 patent and/or trademark cases before the federal courts and the ITC and has drafted over 150 licensing agreements. He has lectured on numerous IP litigation topics for PLI, ABA, AIPLA, and other organizations. He has co-chaired the two AIPLA Mid-Winter Institutes on Litigation Advocacy as well as other programs. He chaired one of the committees of the Brookings Institution project on “Unseen Wealth” that study the valuation of intellectual capital. He has authored many articles and is the coeditor of the recently published ABA/IP-Section-sponsored book Patent Litigation Strategies Handbook. He is a graduate of the University of Pennsylvania (B.S.E.E.) and George Washington University School of Law (J.D.).

Ed Taylor is a member of the Patent Practice Group. Ed concentrates on business-related patent transactions, strategic patent planning, patent opinions and evaluations of patent portfolios, both for purchase, sale and litigation. He also has extensive experience in electronics, semiconductor, internet and computer-related technologies.

Ed co-founded the firm in 1975. For more than a decade he has been an Adjunct Professor at Santa Clara Law School. He has numerous publications and is the current co-chair of the Practising Law Institute conference program for IP Issues in Business Transactions. He is also formally a lawyer delegate to the 9th Circuit Judicial conference.

Bar Admissions
CA, Bar # 042397
OR, Bar # 954361
TX, Bar # 19691000

Court Admissions
U.S. District Court, Central and Northern California
Federal Circuit, U.S. Supreme Court

Law School
St. Mary's University

New Jersey Institute of Technology
  B.S., Electrical Engineering
Columbia University
  M.S., Electrical Engineering