Charles Berman has been active in all areas of U.S. and international patent counseling and prosecution for more than 35 years. Charles currently serves as Chair of the Fellows of the American Intellectual Property Law Association (AIPLA) where he has held several prominent positions over the past several years. He is a frequently invited speaker, and has written numerous articles on the topic of intellectual property.
Areas of Concentration
· Domestic and international patent counseling
· Patent clearance and strategies
· Transactional matters related to patents, trademarks and copyrights
· Patent prosecution, counseling and opinion work
· Business methodology
· Entertainment
· Life science: health sciences
· Industrial controls: software; electrical; Internet; mechanical; manufacturing
Significant Representations
· Counseled significant entertainment corporation on strategies-related technology relating to Internet/entertainment interface.
· Managed portfolio of patents related to cutting-edge materials science and laser technology.
· Managed licensing patent portfolio in health care diagnostics and nutrition to significant supplier of nutritional and health care products.
· Conducted due diligence on potential major biotechnology target acquisition and involved in managing significant U.S. and international biotechnology portfolio.
· Conducted patent interference in field of CAT scans.
· Conducted multiple due diligence investigations in critical-to-business patent issues related to complex technology, Internet, computer and entertainment technology involved in litigation, licensing issues and reissue patents in critical commercial technology.
· Handled multiple patents for medical consumer products including chemical and pharmaceutical compositions, and handled complex multi-party patenting, licensing, reissue and litigation actions for medical consumer product.
· Handled multiple patents in the consumer field related to flashlights and protective cases, and counseled on patent strategies, product reviews, clearance, invalidity, and design-arounds.
· Handled portfolio of patents relating to computerized toys, and instituted patent infringement.
· Handled complex patent prosecution in electrical distribution and monitoring systems and concluded patent interference.
Professional & Community Involvement
· American Intellectual Property Law Association (AIPLA)
- Chair of Fellows (2003-Present), Vice Chair of Fellows (2002-2003), Founding Fellows (1999-Present)
- Organizer, AIPLA-LAIPLA Joint Seminar, Washington and the West Trademark Institute (January 2000)
- Many other appointments within AIPLA preceding 2000
· Liaison Council, US Bar/European Patent Office (1990-Present)
- Representative of California State Bar, Intellectual Property Section and Los Angeles Intellectual Property Law Association
· Treasurer, Secretary and President, Los Angeles Intellectual Property Association (1996-2000)
· Member, American Bar Association
· Member, Editorial Board, Managing Intellectual Property
· Member, Editorial Board, Patent World
· Other professional and community involvement preceding 2000, including International and Foreign Law Committee
Awards & Recognition
· Selected, Super Lawyers magazine (2007-2010)
Rated, AV® Preeminent™ 5.0 out of 5
Articles, Publications, & Lectures
Articles
· Author, "A Global Patent Solution Comes Into View," Managing Intellectual Property, No. 93, October 1999
Books
· Co-Author, Patent Law Strategies: Leading Lawyers on Managing Patent Portfolios, Filing Strategically, and Handling Disputes, October 2007
· Contributing Author, Nanotechnology: Science, Innovation and Opportunity, Lynn E. Foster, Prentice Hall, December 2005
Lectures
· Speaker, "Intellectual Property and the Globalization of the Economy," Globalizzazione e Politiche Brevettuali, Universita Degli Studi Di Milano-Bicocca, Milan, November 2006
· Speaker, "Protecting Global Intellectual Property Assets," British American Business Council, 2001 Global Conference, Los Angeles, CA, November 2001
· Speaker, "International Patent Developments," LAIPLA -Spring Seminar, April 2001
· Speaker, PLI Program, San Francisco, CA, March 31, 2000
· Panelist, GAO, Small Business Foreign Patent Filing, 2001-2002
· Panelist, State Bar of California - Annual Intellectual Property Law Institute, Anaheim-Failing Dot Coms, November 2001
· Moderator and Member of Organizing Committee, Plenary Session, AIPLA Mid-Winter Institute, January 2000
· Organizer and Moderator, Plenary Program on Global Patenting, AIPLA, Mid Winter Program, January 2000
· Organizer, Chairman and Lecturer, Los Angeles Intellectual Property Law Association, "Washington Meets the West," Judges Night, Los Angeles, CA, February 1999
· Many other articles, publications and lectures preceding 1999