Skip to main content

Understanding the Intellectual Property License 2018

 
Author(s): Bruce R. Ewing, Marcelo Halpern, Joseph Yang
Practice Area: Intellectual Property
Published: Nov 2018
ISBN: 9781402432569
PLI Item #: 221777
CHB Spine #: G1390, G1391

Marcelo Halpern is the firmwide co-chair of Perkins Coie’s Technology Transactions and Privacy practice group.  His practice focuses on complex commercial transactions involving the development, deployment and distribution of technology in a wide variety of industries.

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 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.

He 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.  He also has advised on the formation of various blockchain consortiums, including the Enterprise Ethereum Alliance, that develop blockchain platforms in specific industries and create industry standards.

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.

Outside of his legal practice, Marcelo serves on the board of directors for Youth Guidance, an organization offering school-based programs that empower youth in Chicago to succeed in school and in life.  He also serves on the board of directors for the Lawyers Trust Fund of Illinois supporting civil legal aid services to the underserved.  Marcelo previously served as president of the board of directors for Illinois Legal Aid Online, a trailblazing platform connecting people to the resources they need to resolve their legal problems and interact with the legal system when they cannot find or afford a lawyer.


Bruce is the head of the Trial Department in the New York office and Co-Chair of the Firm’s Intellectual Property Litigation Practice Group. His principal area of focus is in the litigation of intellectual property disputes, primarily in the fields of trademarks and copyrights. He has represented numerous companies, both large and small, in the prosecution and defense of claims for trademark and trade dress infringement, trademark counterfeiting, trademark dilution, cybersquatting, copyright infringement and false advertising.

Bruce also focuses on commercial disputes involving intellectual property, with a particular focus on licensing matters. Bruce has represented numerous suppliers and manufacturers of apparel, accessories, jewelry and related items, as well as theatrical producers, publishers and entertainment figures, in commercial cases involving claims for breach of contract, fraud, tortious interference and related causes of action.

Other experience includes counseling regarding various intellectual property matters, the prosecution of applications for trademark and copyright registration, licensing matters, the preparation of rules for contests and sweepstakes, and a broad range of general commercial and contract litigation.

Honors

Named one of “America’s Leading Business Lawyers” by Chambers USA (Intellectual Property: Trademark & Copyright), 2010-2017

Recognized as a Leading Practitioner in World Trademark Review 1000 – The World’s Leading Trademark Professionals, 2013-2017

Listed in Best Lawyers in America©, 2005-2017

Listed in New York Super Lawyers, 2006-2017

Education

Columbia Law School (J.D., 1992)

Brown University (B.A., 1988)


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.