legal issues for innovators & inventors

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Legal Issues for Innovators & InventorsINTELLECTUAL PROPERTY - 201

Premier date: December 16, 2016

Premier Date: December 16, 2016

LEGAL ISSUES FOR INNOVATORS & INVENTORS

IP-201 SERIES

© 2016 DailyDAC, LLC d/b/a/ Financial Poise™ 2

WE WOULD LIKE TO TAKE THIS OPPORTUNITY TO THANK OUR SPONSORS



meet the facultyPANELISTS

Eric Curtin Crawford MaunuPeter Feinberg Hoge FentonGary Sorden Klemchuk LLP

MODERATOR Cory Spence,

SpencePC


Practical and entertaining education for business owners and executives, accredited

investors, and their legal and financial advisors. For more information, visit

www.financialpoise.comDISCLAIMER: THE MATERIAL IN THIS PRESENTATION IS FOR INFORMATIONAL PURPOSES ONLY. IT SHOULD

NOT BE CONSIDERED LEGAL ADVICE. YOU SHOULD CONSULT WITH AN ATTORNEY TO DETERMINE WHAT MAY BE BEST FOR YOUR INDIVIDUAL NEEDS.

http://www.financialpoise.com/


about this webinarEffective legal representation of innovators and inventors requires careful thought and consideration. Among other things, care must be taken to properly initiate communications, prepare assignments, and handle subsequent legal disputes. This webinar discusses common legal issues that often arise during the representation of innovators and inventors. It also includes valuable advice from both innovators/inventors and the IP attorneys who represent them.

about this seriesIn today's economic environment, intellectual property (IP) rights have become increasingly important assets for both individual and corporate entities. More and more, both are recognizing the economic importance of IP rights--whether those rights consist of a single patent--or whether they consist of an entire portfolio also including trademarks, copyrights, and trade secrets.

This information-packed webinar series focuses on the intricacies of IP rights as they relate to the specific areas of brand protection, IP transactions, internet marketing, and other IP issues that are critical when representing innovators and inventors. Join some of the leading attorneys in the World, as they discuss—in plain English for the non-expert—some specific IP challenges that individuals, businesses, and those who represent them are likely to face.

As with all Financial Poise webinars, each episode in the series is designed to be viewed independently of the other episodes, and listeners will enhance their knowledge of this area whether they attend one, some, or all of the programs.


episodes in this series

EPISODE #1 Choosing & Protecting Your Brand

9/23/16

EPISODE #2 Buying & Selling IP 10/21/16

EPISODE #3 Setting Up a Website 11/18/16

EPISODE #4 Legal Issues for Innovators & Inventors 12/16/16

Dates above are premier dates; all webinars also available on demand



Protecting Intellectual Property• Patents grant property rights on inventions, allowing the patent owner to

exclude others from making, selling, or using the invention.

• Copyrights protect original works of authorship, including literature, music, artistic works, and computer software.

• Trademarks identify the source of a good or service used in commerce.

• Trade Secrets are formulas, processes, devices, or other business information that companies keep secret and out of the public domain.


Protecting PatentsA patent grants inventors the right to exclude others from making, using, selling (or offering to sell) or importing their inventions throughout the United States for a limited period of time. To obtain a patent, the inventor submits his or her application to the U.S. Patent and Trademark Office (known as the "USPTO"). There are three categories of patents:• Utility patents are most commonly granted for the protection of new,

useful, non-obvious and adequately specified processes, machines, compositions of matter, and articles of manufacture (or any new and useful genuine improvements thereof), for a period of 17 years from the date the patent is actually issued by the USPTO.


Protecting Patents Cont’d

• Design patents are issued for new, original, ornamental and non-obvious designs for articles of manufacture, for a period of 14 years from the date of issuance.

• Plant patents (used less frequently) are for certain new varieties of plants that have been asexually reproduced, for a term of 17 years.


PATENT REGISTRATION CONSIDERATIONS

The first step in determining whether to protect a new product or invention with a patent is to understand the costs and benefits of patent protection. The patent application and registration process generally lasts three to five years and often involves a costly legal and consulting fees. That being so, it is crucial to determine, before you file, whether the benefits of being able to exclude others from manufacturing, distributing or exploiting the subject matter outweighs the high costs of prosecuting and protecting the patent.


PATENT REGISTRATION CONSIDERATIONS CONT’D

You should also consider whether there are adequate alternatives for protecting the invention. Is adequate protection available under trade secret laws? To what extent does the business plan exploit technology before the patent is issued? For example, in an average patent-infringement civil suit, attorneys' fees alone could easily cost hundreds of thousands of dollars. When conducting this cost-benefit analysis, you should strongly consider:

• What is the projected commercial value of the invention? What are the projected out-of-pocket expenses for registering the patent? In addition to legal fees, what advertising, marketing or even re-tooling expenses will be incurred? For example, if you are concerned that the target market for the invention may be limited, it may not be worth the cost of prosecution and subsequent protection.


PATENT REGISTRATION CONSIDERATIONS CONT’D• How close (from both an infringement and commercial development

perspective) is the subject matter of the invention to existing patented and non-patented technology? For example, if the subject matter of the patent is too close to existing technologies, then the claims allowed by the USPTO will be very narrow and difficult to commercialize and protect.

• Can the invention be exploited within the time frame granted by the federal statute? Or, will the market value of the technology or invention be lost during the three to five years that it will take to obtain a patent? Timing is always an issue. If the patent application concerns a field in which the technology is developing quickly, you do not want to run the risk of the invention becoming obsolete by the time the patent is finally issued.


COPYRIGHT REGISTRATION

Copyright is a form of protection provided by the laws of the United States (title 17, U.S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works.


COPYRIGHT REGISTRATION CONT’DSection 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

• reproduce the work in copies or phonorecords • prepare derivative works based upon the work • distribute copies or phonorecords of the work to the public by sale or other

transfer of ownership, or by rental, lease, or lending • perform the work publicly, in the case of literary, musical, dramatic, and

choreographic works, pantomimes, and motion pictures and other audiovisual works

• display the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work

• perform the work publicly (in the case of sound recordings*) by means of a digital audio transmission


ADVANTAGES TO COPYRIGHT REGISTRATION

Copyright is secured automatically when the work is created, and a work is “created” when it is fixed in a copy or phonorecord for the first time. However, registration is not a condition of copyright protection.

Even though registration is not a requirement for protection, the copyright law provides several inducements or advantages to encourage copyright owners to make registration. Among these advantages are the following:• Registration establishes a public record of the copyright claim. • Before an infringement suit may be filed in court, registration is necessary for works of U.S.

origin. • If made before or within five years of publication, registration will establish prima facie evidence

in court of the validity of the copyright and of the facts stated in the certificate. • If registration is made within three months after publication of the work or prior to an

infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.

• Registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies. For additional information, go to the U.S. Customs and Border Protection website at www.cbp.gov/.


TRADEMARK REGISTRATIONAlthough unregistered trademarks receive some protection under the common law and under the Lanham Act, 15 U.S.C. §§ 1051 et seq., trademarks can be further protected through registration under both state and federal laws. Federal trademark registration provides significant additional substantive and procedural rights.

An applicant obtains a federal registration by filing an application with the United States Patent and Trademark Office (USPTO). Federal registration can be on one of two registers—the Principal Register and the Supplemental Register.


TRADEMARK REGISTRATION CONT’D

The Supplemental Register is for registration of potential marks that are capable of distinguishing the applicant’s goods or services but are not inherently distinctive and have not yet acquired a “secondary meaning” in the mind of the public as an identifier of the specific provider of goods or services. Consequently, until a merely descriptive mark “acquires distinctiveness,” it can only be registered on the Supplemental Register.


TRADEMARK REGISTRATION CONT’DRegistration on the Principal Register provides additional benefits, including: (i) a statutory presumption that (a) the mark is valid, (b) the registrant is the owner of the mark, and (c) the registrant has the exclusive right to use the registered mark; (ii) the registration is proof that the mark has acquired secondary meaning; (iii) the registration serves as constructive notice of a claim of ownership, eliminating any justification or defense of good faith adoption and use made by a third party after the registration date; (iv) the registrant is entitled to nationwide priority based on the filing date; and (v) the registration becomes incontestable after five years on the Principal Register, creating conclusive evidence of the registrant’s exclusive right to use the mark, subject to certain statutory defenses.


TRADEMARK REGISTRATION BENEFITSRegistration on either Principal or Supplemental register provides a number of benefits, including: • it grants the right to use the registered trademark symbol: ®,

• it grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees,

• it acts as a bar to the registration of another confusingly similar mark, and

• it may serve as the basis for an international trademark application.


TRADEMARK REGISTRATION BENEFITS CONT’D

After a mark is registered, the owner must protect the mark by properly using the mark and by monitoring use of the same or confusingly similar marks by others. To maintain the federal registration, the owner must periodically pay maintenances fees and file declarations of continued use and renewal applications.


TRADE SECRET PROTECTIONBroadly speaking, any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. Trade secrets encompass manufacturing or industrial secrets and commercial secrets. States have trade secret laws that specifically define “trade secret.” For example, the Uniform Trade Secret Law (adopted by 48 states) defines “trade secret” as:

(4) "Trade secret" means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

(i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and

(ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy


TRADE SECRET PROTECTIONAdditionally, the federal government recently passed the Defend Trade Secrets Act of 2016 that defines a “trade secret” as:“[T]he term ‘trade secret’ means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing.” 18 U.S.C. § 1839(3).


PROTECTING TRADE SECRETSAt minimum, companies should take three steps to actively protect their trade secrets from misappropriation:

• regularly identify and label trade secrets and other confidential information;

• communicate and engage with employees through confidentiality and other employment agreements; and

• exercise diligence to withhold trade secrets when meeting with outsiders and require nondisclosure agreements when revealing any confidential IP.


USING CONTRACTS TO PROTECT IPA non-disclosure agreement (NDA), sometimes called a confidentiality agreement, allows a company to share its IP with others, whose input it needs, without unduly jeopardizing that information.

Assignment agreements are agreements that fully and specifically provide that the employer owns IP created by an employee in the course of the employee's work duties. Often, the assignment provision is contained in the general employment agreement the employee signs before he begins his employment. In most cases, if an assignment agreement properly setting forth the employer's ownership rights in the employee's invention rights has been signed by the employee, the assignment agreement will control the parties' rights and the agreement will be enforceable in federal and state court.


HIRING AN ATTORNEY – QUESTIONS TO ASK1. What is your education, work experience and area of specialty?2. If your matter is litigation - after explaining my case fully to you, how

can you help me and what are the risks of successfully or unsuccessfully resolving my legal problem? (I understand there are no guarantees and you cannot make specific promises about any outcome.)

3. Is the solution I have in mind regarding my legal problem really necessary or are there other alternatives (such as mediation or collaborative law)

4. How many similar matters have you handled? 5. What were the results of those cases? 6. Which lawyer in the firm will be working on your case? 7. Will there be any limitations on the scope of the representation? 8. How will you be kept informed about the progress of the case? 9. How will I be charged for your services? Are there alternative fee

arrangements available?


HIRING AN ATTORNEY – THE ENGAGEMENT LETTERAn Engagement Letter is a document directed to the client, signed by both lawyer and client, reduced to writing, setting forth the exact duties of the law firm, the lawyer, and the client. It is a binding contract for the representation relationship and should be carefully crafted and understood.The Engagement Letter generally contain the following information:1. Scope of the Work

• Identifies the nature of the problem (e.g., trademark registration, patent litigation), names the expected adverse parties (when dealing with an adversarial representation). May also set forth the parameters of the attorney-client relationship - defining when it begins and when it ends, what happens during the process, and even how materials received by the law firm will be stored and destroyed.

2. Fees to be Charged• how fees will be set (e.g., an hourly rate, a flat fee, a contingent fee, etc.), what other

expenses will be paid, an estimate of the fees, a deposit of funds, how withdrawals from a trust account will be made. Often the letter can provide how fee disputes will be settled, even providing an escape clause permitting the lawyer to withdraw if fees aren’t paid.

3. Obligations of both client and attorney• What the confidentiality obligations are for attorney, the document retention obligations

for the attorney and client, billing and payment procedure and due dates, return of documents and work product after representation


HIRING AN ATTORNEY – FEE STRUCTURES1.Consultation Fees: Some attorneys charge an upfront fee, usually on

a flat rate basis, to meet with the attorney and determine whether s/he will be able to assist you with your legal issues. Many attorneys do not charge an initial consultation fee, but you will need to check in advance to make sure.

2.Contingency Fees: The attorney's fee is based on a percentage of the amount awarded in a judgment or negotiated in the settlement of the case, while if you lose the case, the lawyer does not get a fee. However, should you lose, you will still often be required to pay expenses, so read your representation agreement carefully.


HIRING AN ATTORNEY – FEE STRUCTURES CONT’D

2.Flat Fees: Some lawyers may charge a flat fee for certain types of legal matters (such as copyright and/or trademark registration).

3.Hourly Rate: This is the most typical type of attorney fee arrangement. The lawyer charges a per hour rate, and usually tracks his or her time in fractions of an hour (often 10ths of an hour / 6 minute increments). Some attorneys may charge different rates for different types of cases, so a contract preparation may be $100/hour while litigation may be $200/hour. Additionally, the attorney will also probably charge for certain paralegal fees, usually at a lesser rate than attorney fees.


HIRING AN ATTORNEY – DANGER OF DIY SOLUTIONSPatents

Inventors may prepare their own applications and file them in the United States Patent and Trademark Office (USPTO) and conduct the proceedings themselves, but unless they are familiar with these matters or study them in detail, they may get into considerable difficulty. While a patent may be obtained in many cases by persons not skilled in this work, there would be no assurance that the patent obtained would adequately protect the particular invention.

Trademarks

While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and "common law" unregistered trademarks before you file your application. In addition, trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register that an examining attorney may issue. Finally, a private attorney can also assist in the policing and enforcement of your trademark rights.


HIRING AN ATTORNEY – DANGER OF DIY SOLUTIONS CONT’D

Copyrights

Similar to Patents and Trademarks, an attorney is not necessary to file a copyright application. However, due to the complex nature of dealing with the United States Patent and Trademark Office (USPTO) or the Copyright Office, often times, attorneys are retained to ensure the applications are registered properly. Registration of the work with the Copyright Office is still necessary if you intend to bring a lawsuit in Federal Court to enforce the copyright. In addition, registration provides the copyright owner procedural advantages should an infringement lawsuit ever be filed, including the ability to obtain statutory damages and attorney's fees.


LICENSING INTELLECTUAL PROPERTYA licensing agreement is a partnership between an intellectual property rights owner (licensor) and another who is authorized to use such rights (licensee) in exchange for an agreed payment (fee or royalty).

A typical license agreement will specify the rights granted, the term of the grant, the consideration in exchange for the grant, records and reporting, representations and warranties regarding the intellectual property, how infringement issues will be handled, tort liability for products or services covered by the license, and other factors.


TYPES OF LICENSES1. Express Licenses

• License where the parties come to a meeting of the minds regarding the specific terms of the license. Usually a written agreement.

2. Implied License• An implied copyright license is a license created by law in the absence of an

actual agreement between the parties. Implied licenses arise when the conduct of the parties indicates that some license is to be extended between the copyright owner and the licensee, but the parties themselves did not bother to create a license. This differs from an express license in that the parties never actually agree on the specific terms of the license. The purpose of an implied license is to allow the licensee (the party who licenses the work from the copyright owner) some right to use the copyrighted work, but only to the extent that the copyright owner would have allowed had the parties negotiated an agreement. Generally, the custom and practice of the community are used to determine the scope of the implied license.


TYPES OF LICENSES CONT’D3. Exclusive Licenses

• License limited to a specific scope or field, such as context, market, territory, or time. 'Exclusive' does not mean 'one and only' license granted, but only that the licensor agrees not to grant other licenses that have the same rights within the scope or field covered by the exclusive license. It may refer to a geographical area, technological application, method of production, or production of a specific product. Exclusivity may or may not include competition from other licensees or the licensor itself, granting of sublicenses, performance requirements to be met by the licensee, and/or a time limitation.

4. Non-Exclusive Licenses• A non-exclusive license, you give the licensee permission to exercise the right in

question, but you also reserve the right to continue exercising it yourself and to authorize others to do so. The recipient of a non-exclusive license may exercise the right or rights licensed, but MAY NOT: authorize others to exercise the right or rights licensed via transfer or license without permission of the copyright owner; and sue for copyright infringement of the licensed right(s).


TYPES OF LICENSES CONT’D5. Cross Licenses

• When used in the context of patents, a cross-licensing agreement is an agreement pursuant to which two or more license holders exchange licenses so that each party may benefit from the other’s patent. Generally, the patents that each party owns cover different essential aspects of a given commercial product. Therefore, by cross licensing, each party maintains their freedom to bring the commercial product to market. Pursuant to cross licensing, neither party pays monetary royalties to the other party.


INTELLECTUAL PROPERTY LITIGATION

Litigation, while necessary in some cases, can be a costly endeavor – both as a Plaintiff or a Defendant.

There are several informal and formal alternatives or pre-cursors to litigation.


INTELLECTUAL PROPERTY LITIGATION CONT’DArbitration: Arbitration is an adjudicative process that, like a trial, has a third party decide the dispute. Thus, arbitration is a form of private judging. Because arbitration is a creature of contract, it has a major advantage over litigation: the parties can select a decision maker with expertise in the type of intellectual property dispute involved. Arbitration also has other advantages over litigation. It is potentially less costly and faster because: • it is less formal than litigation• it allows for less discovery • judicial rules of evidence typically do not apply• the arbitrator’s award is final, binding and enforceable in court• there are limited appeal rights.


INTELLECTUAL PROPERTY LITIGATION CONT’DMediation: Unlike arbitration, mediation is not an adjudicative process; it is facilitative in nature. Mediation involves the parties in a dialogue concerning the disputed issues. Establishing who is right and who is wrong on the issues is not the focus of mediation: The goal is to seek business solutions acceptable to both sides through negotiation, compromise and creative problem solving.

Litigation is necessary in some circumstances. The vast majority of intellectual property litigation, especially cases involving copyright, patent and trademark infringement claims takes place in the federal courts as they are statutory based disputes. Until recently, most trade secret litigation (not involving other claims) was governed by state law. The Defend Trade Secret Act of 2016, as passed by the United States, created yet another federal claim for potential litigants to gain entrance to federal courts.


AQUIRING INTELLECTUAL PROPERTYA business may acquire IP for the following reasons:

• Strengthen negotiation positions

• Risk mitigation

• Investment opportunities


AQUIRING INTELLECTUAL PROPERTY CONT’DDue Diligence is necessary. Given the importance of intellectual property assets to a business, and the willingness of owners to litigate in order to protect them, it is important that you ensure:

• that you have "freedom to operate" in respect of your present and future business activities. This is to prevent wasting resources on an enterprise that you may later be forced to stop as a result of infringing third party intellectual property and in some cases in respect of which you could later have to pay significant damages; and

• that a third party from which you are acquiring intellectual property rights has full entitlement to them.


OTHER SPECIAL CONSIDERATIONSJoint Ownerships:Patent Law Under U.S. patent law, when there are joint inventors of a single invention, in the absence of an agreement to the contrary, each inventor is presumed to be a joint owner in the patent, having an “undivided equal partial interest in the invention as a whole.”1 Similarly, when companies collaboratively pursue research and development without delineating ownership, each company is presumptively a co-owner of the patent if: (i) at least one employee from the company is a co-inventor, and (ii) the employee previously assigned in writing to the company his future rights to inventionsCopyright Law A copyright comes into existence the moment an idea is fixed into tangible medium of expression and initially vests in those who conceive of, translate, and fix the idea. Therefore, two or more individuals can share an equal undivided interest in a copyrighted work without an explicit agreement provided they satisfy the conditions of joint authorship. for a joint work to exist, two or more individuals must have intended their contributions to be merged into “inseparable or independent parts of a unitary whole” at the time of creation. Thus, joint works are distinguished based on the intent of the participants


OTHER SPECIAL CONSIDERATIONS CONT’DEmployment Issues:Patent Law: Invention Assignment Clauses invention assignment clauses assign the inventor’s right title and interest in the invention to another party. In the employment relationship, the clause will assign and transfer all rights to the employer. The language of the assignment clause must be precise. Stanford University had employees sign “Copyright and Patent Agreements” that contained the words “I agree to assign” which the Supreme Court interpreted as mere promise to assign rights in the future which requires a subsequent assignmentCopyright Law: Work For Hire A work is not “made for hire” simply because one person pays another to create the work or because an agreement between the parties labels it a “work made for hire.” Under the Copyright Act (17 U.S.C. §§ 101 et seq.), a work is a “work made for hire” only if: (1) it is prepared by an employee within the scope of his employment; or (2) it is specially ordered or commissioned from an independent contractor pursuant to a written agreement and the work falls within one of nine statutorily defined categories.

More About The Faculty D

WILLIAM [email protected]

William Spence assists individual and business clients to obtain their best possible outcome in contentious legal matters. He has extensive experience in litigation, arbitration, and mediation involving all areas of intellectual property law. A registered patent attorney, Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret misappropriation; unfair competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent proceedings (e.g., inter partes review) ; trademark infringement; and copyright infringement.

He has litigated claims in both state and federal courts throughout the United States. Additionally, Mr. Spence has extensive experience with patent monetization strategies and complex, international patent infringement litigation involving multiple parties and jurisdictions, most notably including Japan. He is a published author and frequent speaker on patent monetization and other intellectual property issues, and has been repeatedly recognized as an “Illinois Rising Star” and “Illinois Star,” in the area of intellectual property.

Mr. Spence is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science Degrees in Chemical Engineering and Biophysics (“Physics in Medicine”). As a student he received the distinction of Notre Dame Scholar and also earned the Monogram Award. Upon graduation from Notre Dame, Mr. Spence received his commission as a Second Lieutenant in the United States Air Force, Medical Service Corps. After completing his military service, he worked for several years in the chemical industry before pursuing his legal education at the University of Houston Law Center.

Prior to forming SpencePC, Mr. Spence spent twelve years practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan.

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More About The Faculty D

ERIC [email protected]

Eric’s practice has included the preparation and prosecution of patent applications in the electronic, electromechanical, biomedical, chemical and optical technology areas, and further in the area of computer-implemented/software inventions. Eric also assists clients in the procurement of trademarks and copyrights, and with various aspects of trademark and copyright law including oppositions, cancellations, and license agreements. He maintains a robust practice in client counseling, including opinions of infringement/invalidity.Eric leads his firm’s legal education efforts, has authored multiple intellectual property articles, and serves as an expert on nationally-broadcast panels concerning patent, trademark and copyright matters. His recent article Functional Claiming Under U.S. Patent Law has been published by the International In-house Counsel Journal.

Technically, Eric has significant experience in various cross-disciplinary fields including those involving wireless communications technologies, semiconductors, medical/biological devices, thin-film transistors, solar cells, proteomics and nanotechnologies. He has worked extensively in the semiconductor design, physics and materials science fields, and in a variety of communications fields involving mobile electronics, video processing, and media content streaming.

Prior to entering the legal profession, Eric worked in engineering and research areas for the automotive and plastics industries. He is experienced in prototype modeling, failure analysis, and in the design, installation, and operation of electronic controls, robotics and communications systems.In addition to his legal and industry experience, Eric is involved with non-profit and community organizations, serving on the board of directors for two Minnesota-based non-profit organizations that promote youth athletics.

Eric has engineering and law degrees from the University of Wisconsin at Madison. He is licensed to practice law in several state and federal courts and is a registered patent attorney. 45

https://www.iicj.net/library/detail.asp?key=870

More About The Faculty: D

PETER [email protected]

Peter Feinberg has almost 25 years’ experience representing primarily middle market companies in all aspects and many sectors of merger and acquisition transactions. Mr. Feinberg has successfully closed well over 100 merger and acquisition transactions, representing buyers and sellers, public and privately held companies, multinational firms, family owned businesses and private equity firms. He practices in Silicon Valley at Hoge Fenton Jones & Appel, a more than 60 year old, 40+ attorney firm. He has previously been a partner at Thelen Reid & Priest and Ferrari Ottoboni and has worked in house at NetApp and Clorox.

More About The FacultyGARY SORDEN

[email protected] Sorden, Managing Principal at Klemchuk, LLP.

He primarily focuses on commercial and intellectual property litigation in the areas of software, electrical, mechanical, semiconductor, and chemical technologies. He has represented clients in federal and state matters before trial and appellate courts as well as alternative dispute resolution forums. His experience also includes representing clients in a wide variety of matters including real estate, commercial, oil and gas, business, environmental, securities actions, class actions, product liability, trademark, copyright, and patent disputes. Gary’s diverse litigation experience allows him to provide comprehensive representation in a wide-variety of litigation matters while also maintaining the business objectives of his clients.Gary also counsels clients in obtaining and developing intellectual property including product and company branding strategies as well as the development of patents, trademarks, and copyrights. Intangible assets, such as intellectual property, are a key driver in the valuation of companies and as a result, he works closely with his clients to develop an intellectual property strategy that is appropriate and scalable for the needs of his clients.Gary earned his law degree from Texas Tech School ofLaw and holds a M.S. in Engineering Management from Southern Methodist University as well as a B.S. in Computer Science from the University of Texas – Pan American.


mailto:[email protected]

Visit www.eisneramper.comEisnerAmper. Let's Get Down to Business®

EisnerAmper LLP is a leading full-service advisory and accounting firm, and is among the largest in the United States. We provide audit, accounting, and tax services, as well as corporate finance, internal audit and risk management, litigation services, consulting, private business services, employee

benefit plan audits, forensic accounting, and other professional advisory services to a broad range of clients across many industries. We work with high net worth individuals, family offices, closely held businesses, start-ups, middle market and Fortune 500 companies. EisnerAmper is PCAOB-registered and provides services to more than 200 public companies and to thousands of entities spanning the hedge, private equity, brokerage and insurance

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Global, EisnerAmper serves clients worldwide.

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Important Notes

• THE MATERIAL IN THIS PRESENTATION IS FOR GENERAL EDUCATIONAL PURPOSES ONLY.

• IT SHOULD NOT BE CONSIDERED LEGAL, INVESTMENT, FINANCIAL, OR ANY OTHER TYPE OF ADVICE ON WHICH YOU SHOULD RELY.

• YOU SHOULD CONSULT WITH AN APPROPRIATE PROFESSIONAL ADVISOR TO DETERMINE WHAT MAY BE BEST FOR YOUR INDIVIDUAL NEEDS.