Breakfast of Champions: Protecting Your Intellectual Property

Hosted by: Center for Research Innovation

Sponsored by: Hamilton, Brook, Smith & Reynolds, P.C.

Presenters:
Mark Solomon, Principal, Hamilton, Brook, Smith & Reynolds, P.C.
Deirdre Sanders, Principal, Hamilton, Brook, Smith & Reynolds, P.C.
Joshua Matloff, Associate, Hamilton, Brook, Smith & Reynolds

RSVP

Join the Center for Research Innovation as we kick off a week-long series of informative sessions. Led by two practicing attorneys, this session will cover the ins and outs of protecting your intellectual property. The speakers will address key issues that intellectual property managers and entrepreneurs should consider in developing their intellectual property strategy to maximize value. Topics to be covered include paths through patent and legal systems, inventorship, ownership, commercial and strategic uses for intellectual property, an overview of recent changes, and hot topics in patent law.

Mark Solomon is a Principal of the firm and has dedicated his legal career to guiding engineering companies and university engineering centers through the development, management, protection, and enforcement of intellectual property rights. He drafts and prosecutes patent applications and assists clients with intellectual property matters relating to patent litigation, trademark oppositions, written and oral opinions, trademark prosecution, copyright law, licensing, domain name disputes, the sale and licensing of intellectual property assets, and associated counseling strategies.

Mark is a respected leader in the legal community and served as the President of the Boston Patent Law Association in 2009. He speaks frequently, addressing a variety of intellectual property topics and audiences. Mark lectures in legal, business, and business school forums and was the first recipient of Suffolk University Law School’s Journal of High Technology Law Award for Excellence in Intellectual Property Law.

Mark’s technical background includes diverse engineering technologies such as telecommunications, optics, digital signal processing, optical and electrical networking, control systems, business methods, analog and digital electronics, software, GPS systems, antennas, medical devices, mechanical devices, fuel cells, and other renewable energy sources.

Mark takes a partnership approach to client matters, often personally serving on patent committees and advising on successful and cost effective U.S. and international patent strategies aimed to support the client’s unique and specific business goals.

Mark’s clients benefit from his personal industry experience. Prior to joining the firm, he worked for ten years as an engineer in the areas of R&D, design, development, testing, and field integration. He was an electrical/control systems engineer for Xinetics, Inc., a start-up manufacturer and systems integrator of deformable mirrors (used in the growing field of real-time adaptive optics), a control systems electrical engineer for Itek Optical Systems, and an electrical and software engineer for Raytheon Company. Mark offers hands-on experience in analog and digital hardware, digital signal processors, hybrid micro-electronics, software engineering, servo control systems, process control systems, data capture and processing, signal processing, opto-electronics, digital networks, and telecommunications.

Deirdre E. Sanders is a Principal of the firm and has dedicated her legal career to guiding biotechnology companies and university biotechnology centers through the development, management, and protection of intellectual property rights. The success of her patent practice is fueled by the balance of her patent prosecution specialty and her intellectual property litigation and enforcement experience.

Deirdre’s practice is focused in the field of biotechnology with a particular emphasis in the areas of biologics including antibody-based therapeutics, pharmaceuticals, medical devices, genetic diagnostics, protein-based sensors, and drug discovery and development. She assists clients with the preparation and prosecution of U.S. and foreign patent and trademark applications, as well as European Supplementary Protection Certificates for pharmaceuticals; drafts legal opinions regarding infringement, validity, and freedom to operate; conducts intellectual property due diligence studies; and drafts intellectual property license agreements.

Clients benefit from Deirdre’s experience involving contested matters, including patent office interferences, foreign patent oppositions, arbitration proceedings, and intellectual property litigation before federal courts in Texas, New York and California, as well as the District Court of the Hague related to issues of patent infringement and validity, trademark infringement and cancellation, intellectual property license agreements, and officer tort liability.

Deirdre demonstrates expertise at the intersection of science, law, and business. She is Chair for the Worcester Polytechnic Institute Venture Forum, co-chairs the Boston Patent Law Association’s International and Foreign Practice Committee, serves as a judge for the Smaller Business Association of New England Annual Business Innovators competition, and is a consistent participant in and supporter of the Women Entrepreneurs in Science and Technology (WEST).

Deirdre received her Juris Doctor degree from Boston College Law School, where she worked for the ABA Committee on Rules of Practice and Procedure, United States Judicial Conference.

Joshua Matloff is an Associate with Hamilton, Brook, Smith & Reynolds and practices in the areas of computer systems, electronics, mechanical devices/systems, software telecommunications, and clean energy.

Prior to joining the firm, Josh worked as a patent attorney in the Office of General Counsel at The Charles Stark Draper Laboratory where he advised on claim scope and prior art for families of patent applications and analyzed USPTO office actions and invention disclosures. He consulted on licensing opportunities of patent families and drafted corresponding license term sheets.

Josh also has experience working as a research assistant at both Boston University’s Center for Space Physics and High Tech Tools and Toys Lab. He has designed, implemented, and successfully tested a prototype of an ad-hoc communication device and corresponding Windows Software, a 32-bit MIPS pipelined processor with a multiplier using Verilog, an infrared communication system between two Freescale HCS12 processors using assembly language and A/D converters.

Josh has received several honors which include being a Center for Subsurface Sensing and Imaging Scholar at Boston University and being the recipient of the Stanley Sokoloff Intellectual Property Award at Suffolk University Law School in 2010.