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Patent Licensing Today 2015: Making Money Without Getting Sued

 
Author(s): Mark S. Holmes, Joseph Yang
Practice Area: Intellectual Property
Published: Oct 2015
PLI Item #: 59485
CHB Spine #: G1246

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.

 



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.