REPRESENTATIVE EXPERIENCE
IP Procurement and Portfolio Management
Advised a manufacturer of consumer electronics and networking equipment and accessories on
global brand protection, portfolio management, anti-counterfeiting, enforcement, and compliance
projects.
Represented a healthcare diagnostics and medical device company in virtually all its U.S.
nonlitigation patent work, including prosecution of thousands of patents and applications.
Advised on strategic patent counseling, patent licensing and negotiations, and
freedom-to-operate and enforcement matters. Provided European Patent Office and Australian
counseling (post-grant and strategic enforcement work).
Managed the entire global IP portfolio of trademarks and designs for a British shirt-maker.
Developed a global patent portfolio to protect the technology of a digital therapeutics startup.
Advised one of Europe's largest roofing and waterproofing manufacturers on its global IP
management, involving more than 80 countries. Advised on strategy, clearance, and trademark
prosecution for the client's brand and various new product and service brands. Handled the
worldwide filings for over 250 trademark applications. Advised on a number of actions related to
the rebranding, including cancellation actions at the European Union Intellectual Property
Office and the UK Intellectual Property Office in relation to marks held by third parties on the
grounds of nonuse.
Advised an American multinational manufacturer and marketer of branded consumer foods on
international IP matters. Advised on the expansion of its yogurt business in numerous
international markets through IP licensing and franchising arrangements.
Represented a private research university in a variety of IP matters, including patent
procurement and general IP counselling. Filed and prosecuted numerous patent applications, both
domestically and internationally, and provided additional patent and other IP-related legal
advice on various occasions. Represented venture creations and commercial entities that
originate at the university or are the beneficiaries of technologies invented by the
university's prestigious faculty.
Assisted a group specializing in the manufacture of a series of small and large pieces of jewelry established in the prestigious Place Vendôme in the deployment of their international operations—the establishment of commercial agent, trademark registrations, and dress patents in 40 countries.
Assisted a French startup specializing in interior design catering to the Chinese market in the
creation of its corporate structure and the protection of its intangible assets. Advised on
trademark protection in China and Europe, as well as the implementation of the contractual
relationships with suppliers and customers through nondisclosure agreements, service provisions,
and IP rights assignments on a day-to-day basis.
Assisted a leading highway infrastructure operator on a large range of issues related to
mobility trends, including day-to-day assistance on transactional aspects of highly innovative
projects pertaining to electric vehicles, connected car and driverless transportation, research
and development, and consortiums with public and private stakeholders of the transportation
sectors within various European initiatives (C-ROADS, SCOOP, CINC). Drafted and negotiated a
partnership agreement with a car manufacturer in order to test autonomous driving in real
traffic conditions, including the crossing of toll booths and management of roadwork and
accidents.
Advised an architecture firm on its intellectual property licensing and protection programs for
various international projects, including museums, event spaces, arts centers, a courthouse, and
a cineplex.
Managed the entire global IP portfolio of trademarks and designs for a designer of jewelry and accessories.
Managed a global portfolio of more than 1,500 trademarks for a clinical diagnostic company that provides laboratory analyzers, tests, and related products and services to hospitals and clinical laboratories.
Represented a state-led nonprofit education, research, and community development organization in
advising on joint ownership and enforcement of IP.
Represented a leading Sweden-based manufacturer of haemodialysis and haemofiltration equipment
and consumables in litigation and patent work, including prosecution of hundreds of patents and
applications involving various healthcare-related technologies.
Represented a leading manufacturer of energy storage systems in its European and U.S. IP
prosecution work.
Counseled an American tech-real estate marketplace on a variety of IP issues ranging from
agreements to trade secret matters.
Acted as the primary U.S. trademark and copyright counsel for two apparel and accessories
specialty retail brands. Provided daily clearance and counseling relating to use and
registration of new marks, phrases, and designs that the brands were going to use.
Advised a world leader in facial analysis and detection software on complex software licensing
and software development kit issues relating to virtual reality makeup application technology,
as well as a strategic license agreement with a world-leading cosmetics company.
Managed the worldwide patent and trademark portfolios for an innovator of technology-based
defense and commercial systems.
Handled numerous domain names and online issues for several Australian sports teams. Advised on
various trademark registrations and brand portfolio management, including protection of
trademarks and playing uniform designs.
Advised a private university in Pennsylvania on patent enforcement litigation, worldwide patent
prosecution, and strategic licensing and counseling.
Advised one of the world's largest beauty companies on its global collaboration and licensing
project for a film, which included trademark clearance and risk management issues in more than
50 countries. Advised on the license and marketing agreements with a British-American production
company and an film director.
Managed the international IP portfolio of an Australian sports governing body, which includes
trademarks as well as the names and logos of clubs and various new media, social media, and
children’s education programs.
Managed a large trademark portfolio for a manufacturer and distributor of best-in-class
energy-based aesthetic and medical treatment systems, including a diverse range of leading
treatment applications for hair removal, skin revitalization, scar reduction, gynecological
health, and body-contouring products and services provided worldwide.
Handled all patent work for an AI research startup, including prosecution of its worldwide
patent portfolio since its inception. Advised on strategic patent counseling and licensing, and
provided European Patent Office patent procurement assistance.
Advised a specialist in the development and manufacturing of diagnostic system solutions on development, cooperation, and licensing agreements.
Managed virtually all IP for a manufacturer of personal care products, including 1,000 global
trademarks such as for a leading skin care brand, global trademark clearance and enforcement,
and major agreements and licenses.
Advised an iconic Italian fashion accessories house on international brand and design protection
and clearance matters. Secured our role as the only law IP firm advising the client, ahead of
leading firms in Europe and Italy, notwithstanding the client’s location in Milan. Advised on
clearance and IP strategy for new product collections and acquisition of IP rights for
limited-edition products, collaborations, and licensing projects. Assisted with design
infringement actions against a number of high-street retailers in the United Kingdom, as well as
defending claims received by third parties in Australia, China, Europe, Japan, and the United
Kingdom.
Handled all of the patent work for a headphones manufacturer, including prosecution of its
worldwide patent portfolio, infringement work, and licensing.
Managed the worldwide trademark portfolio and enforcement efforts of a global leader in digital
security and convergent media solutions, its affiliates, and its subsidiaries. Included
clearance, prosecution, maintenance, and enforcement work across six continents.
Served as a preferred provider of patent procurement, patent portfolio management, and patent
counseling services for a manufacturer of ceramic-based passive electronic components and
solutions.
Provided patent counseling, including patent procurement and portfolio management services, for
a company based in Kyoto in support of its leading global business in the design, manufacture,
and supply of advanced electronic materials, electronic components, and multifunctional,
high-density modules that have wide-ranging applications, including mobile phones, home,
automotive, energy management, and healthcare. Managed and handled a large-scale U.S. patent
portfolio of hundreds of U.S. patents directed to battery technology.
Filed and prosecuted thousands of U.S. patent applications on behalf of one of the world's
largest food and beverage companies. Assisted with strategic patent counseling, including
providing assistance with respect to acquisitions.
Worked with a nonprofit research institute focused on national security issues in various IP
counseling and licensing matters, as well as the preparation and handling of trademarks.
Provided patent counseling, including patent procurement and portfolio management services, for
a Tokyo-based joint venture in support of its leading global manufacturing business of advanced
small- and medium-sized display panels, which provide high-resolution, low-power consumption,
and thin displays for smartphones, tablets, automotive electronics, digital cameras, medical
equipment, and other electronic devices. Managed and handled a large-scale U.S. patent portfolio
of more than 1,000 U.S. patents directed to display technology.
Advised a Japanese consumer goods company on IP clearance and pre-publication issues for an iconic character franchise, as well as other client assets globally.
Represented a major Japanese manufacturer of consumer electronics products on a wide range of
patent counseling services, including handling large-scale patent portfolios from the early
developmental R&D stage to product launch and ongoing developmental efforts.
Provided strategic intellectual property counseling to a medical device company relating to cardiac health technologies, with a focus on diagnostic imaging and intravascular data collection.
Managed the U.S. trademark portfolio for one of the world’s leading online game developers.
Advised the businesses of a late, internationally known architect on IP strategy, licensing, and
related matters. Appointed to advise on a range of cross-border IP concerns in connection with
complex ownership, licensing, and structuring issues, including the ownership and protection of
an iconic brand.
Provided trademark and copyright counseling for a e-commerce fashion and home decor site and
managed client's global portfolio of related marks. Represented the client in both offensive and
defensive disputes relating to trademarks and counseled regarding fair use.
Managed all of the trademarks owned by a travel review and planning website and its various
subsidiaries, including a travel booking site, an online vacation rental marketplace, and a
travel guide service. Advised on clearance, prosecution, maintenance, and enforcement around the
world.
Managed the trademark portfolio for a radiation oncology society, assisting with a wide variety
of commercial contracts and licensing, as well as policing and enforcing client's trademarks in
the marketplace.
Advised a German online bank on the management of its trademark portfolio.
Assisted the exclusive licensee of a fashion and apparel company in Australia in its acquisition
of the company's business from its previous French owner. Included IP due diligence and
negotiation of the IP assets clearance, as well as drafting of a licensing agreement between
Australian and French entities. Since the acquisition, managed the company’s global portfolio of
IP assets, including the registration and enforcement of new clothing models and trademarks
through the implementation of customs surveillance across Europe (E.U.-wide and locally at the
member-states level) and coordinating with the new management team appointed by our client in
France.
Managed the trademark, copyright, and patent portfolios for a manufacturer and distributor of
advanced fault-tolerant computers and control systems, especially for mission-critical
industries such as banks and other financial institutions, emergency response centers, police
and fire departments, hospitals, government agencies, stock exchanges, and Internet providers.
