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Understanding the Intellectual Property License 2015

 
Author(s): Marcelo Halpern, Susan Progoff, Joseph Yang
Practice Area: Intellectual Property
Published: Dec 2015
PLI Item #: 59391
CHB Spine #: G1247, G1248

Marcelo Halpern is a partner with the firm's Business group and is co-chair of the firm’s national Technology Transactions & Privacy group.  Marcelo's practice focuses on transactional and strategic matters involving the development, deployment and distribution of technology.  His clients include global "FORTUNE 100" companies, start-up and emerging growth companies, as well as U.S.-based and international governments and non-profits. His experience includes structuring and negotiating technology and intellectual property-oriented strategic alliances and joint ventures; software, data and content licensing; outsourcing and ERP implementation transactions; counseling on digital strategy concerns including open source licensing, data security, data use and privacy issues; hosting, cloud computing and software services agreements; data analytics and contract licensing; research and development transactions; private labeling, co-branding and other marketing and distribution strategies; and intellectual property and technology issues arising in the context of mergers and acquisitions, financing and bankruptcy transactions.

EDUCATION

•           Columbia University School of Law, J.D., 1992
•           Columbia University, Graduate School of Business, M.B.A., 1992
•           Wesleyan University, B.A., 1985

PROFESSIONAL RECOGNITION

•           Chambers' USA Guide to Leading Business Lawyers, 2004 - present 
•           The Best Lawyers in America, 2006 - Present  (2016 Technology Law "Lawyer of the Year" for Chicago)
•           Illinois Leading Lawyers Network, 2004 - present 
•           Legal 500, Leading Lawyer, 2005 – present

PROFESSIONAL LEADERSHIP

•           Practising Law Institute, Understanding the Intellectual Property License program, Chair
•           Illinois Legal Aid Online, Board of Directors, Immediate Past President
•           International Technology Law Association (ITechLaw), Membership Committee, Local Representative
•           American Bar Association, Science and Technology Section, Member
•           Illinois State Bar Association, Member
•           Chicago Bar Association, Computer Law Committee, Member


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.


Joseph Yang is a partner at PatentEsque Law Group, LLP, and previously served as VP & General Counsel of Cryptography Research, Inc. until its acquisition by Rambus, Inc.

Joe specializes in structuring and negotiating IP-centric deals (patent licensing/sales, tech transactions, JVs and M&A), and in the use of patents as strategic business assets. He has been lead counsel on hundreds of deals involving billions of dollars in value – across the computer, electronics, semiconductor, digital entertainment, consumer goods, healthcare, energy and manufacturing industries. Joe has also been an expert witness, arbitrator, overseen complex patent litigation, and developed and licensed worldwide corporate patent portfolios.

Joe is a recognized authority on IP law. He is profiled in Marquis “Who’s Who in American Law” and “Who’s Who in America,” and has been named one of the “World’s Leading IP Strategists” by Intellectual Asset Management magazine. Joe co-chairs the “Advanced Licensing,” "Understanding the IP License," and “Advanced Patent Licensing” and courses at PLI. He has written for journals & books, and been cited by courts & treatises, on patent and licensing law. Joe is co-teaching the 2014-2015 "Patent and Technology Licensing" course at Stanford Law School, and has previously co-taught the “Patent Law and Policy” course at U.C. Berkeley School of Law.

Before PatentEsque Law Group, Joe co-founded and later led the IP Strategy & Transactions practice in the Palo Alto office of Skadden, Arps. Before becoming an attorney, Joe was a research engineer in the aerospace and energy industries. He holds a J.D. from Stanford and a Ph.D. (in engineering) from the California Institute of Technology, where he has served on the boards of the Alumni Association, and the Caltech Associates.