The Basics of Intellectual Property and Transactions Relating to the Transfer and Development of Intellectual Property Rights

David has served as both in-house and outside counsel to some of the largest and most recognizable Fortune 500 companies. In these positions, he has been responsible for developing, coordinating and executing all aspects of patent protection strategies among global teams of business and technology hubs. In addition, he has developed objectives and procedures for identifying and protecting high value technology assets, and organized and led teams of technology leaders, who assisted in coordinating enterprise-wide protection efforts. David also managed patent procurement efforts by in-house and outside counsel.

David has drafted and prosecuted patent applications in the mechanical, electro-mechanical, telecommunication arts, to name a few, and participated in various post grant reviews. David also has extensive experience in procuring design patents for his clients. He has also drafted many freedom-to-operate opinions and patentability opinions for his clients. Further, David has protected his clients’ interests in litigation matters via various Examination Before Trial (EBT) proceedings, including taking and defending depositions, preparing and examining infringement claim charts, preparing Markman briefs and assisting in Markman hearings.

David enjoys lecturing about intellectual property and technical subject matter, and has participated in and chaired many industry conferences and panels. David has lectured about patents, including utility and design patents, as well as other forms of intellectual property, to clients, startups, and to other attorneys via local and regional committee activities. He taught Cyber Law at Quinnipiac University School of Law as an Adjunct Professor for several years. He also taught mechanical and aerospace engineering courses to undergraduate and graduate students at the NYU Tandon School of Engineering (formerly known as Brooklyn Polytechnic University) as an Adjunct Professor for several years.

Sara Colburn assists clients in intellectual property litigation matters in the areas of patent, trademark, copyright, trade secret, and contractual disputes. She has prepared briefs and attended depositions, mediations, and trails. Sara also assists clients with intellectual property transactional matters. She has drafted numerous intellectual property agreements, including licenses, confidentiality / non-disclosure agreements, assignments, manufacturing and supply agreements, and others. Sara has experience in counseling clients in obtaining intellectual property protection, and defending and enforcing intellectual property rights.

Katherine Tassmer assists clients with an array of patent and trademark infringement actions and intellectual property transactional matters. She has experience in pharmaceutical litigation under the Hatch-Waxman Act, trademark litigation involving trade dress and unfair competition and false advertising, as well as drafting various intellectual property agreements, including settlement agreements, non-disclosure agreements, and manufacturing and supply agreements. She also has experience assisting with post-grant proceedings before the United States Patent and Trademark Office Patent Trial and Appeal Board. Katherine is knowledgeable in all phases of intellectual property litigation, from case inception through trial, and is well-versed in all aspects of electronic discovery.