Manuel Valcarcel, a registered patent attorney, focuses his practice on intellectual property and technology transactional, licensing, and prosecution matters. He is experienced in technology development, licensing, strategic alliance and acquisition transactions and general corporate representation of intellectual property-driven businesses. Mr. Valcarcel reviews inventions for patentability and infringement, reviews trademarks for registrability and usage, and prosecutes patent and trademark applications. He also handles intellectual property worldwide portfolio management for many public and private companies.
Professional & Community Involvement
· Member, American Bar Association, Intellectual Property Section
· Member, American Intellectual Property Law Association
· Member, The Florida Bar, Business and Entertainment Law Sections
· Member, Intellectual Property Committee, The Florida Bar
· Member, International Trademark Association
· Director/President, Patent Law Association of South Florida, 1998-1999
Awards & Recognition
· Listed, The Best Lawyers in America, Communications Law; Technology Law, 2007-2014
· Team Member, Corporate Board Member magazine and FTI Consulting Inc., one of "America's Best Corporate Law Firms," 13th Annual Legal Industry Study, 2013
· Member, team ranked as a top corporate law firm in Miami as selected by corporate directors, in the annual "Legal Industry Research Study," Corporate Board Member magazine and FTI Consulting Inc. (10th year), 2002-2009, 2011-2012
· Member, team nationally ranked as the No. 1 trademark law firm in CSC's Trademark Insider's 2009 Annual Report (sixth consecutive year), 2004-2009
· Ranked, No. 38 among the Top 50 Trademark Attorneys, CSC's Trademark Insider, 2nd Quarter 2010
· Ranked, No. 32 among the Top 50 Trademark Attorneys, CSC's Trademark Insider, 1st Quarter 2010
· Ranked, No. 35 among the Top 50 Trademark Attorneys for 2009, CSC's Trademark Insider, Yearend 2009
· Ranked, No. 34 among the Top 50 Trademark Attorneys for 2008, NameProtect Trademark Insider, Yearend 2008
· Recipient, M&A Deal of the Year Award, Latin Lawyer magazine, 2008
· Ranked, among the Top 50 Trademark Attorneys for 2006, NameProtect Trademark Insider, 3rd Quarter 2006
· Ranked, among the Top 50 Trademark Attorneys for 2006, NameProtect Trademark Insider, 2nd Quarter 2006
· Ranked, 14th nationally among the top 50 Trademark Attorneys for 2006, NameProtect Trademark Insider, 2nd Quarter 2006
· Ranked, among the Top 25 Trademark Attorneys for 2003, NameProtect Trademark Insider, 3rd Quarter 2003
· Intellectual Property Counsel for Rowland Coffee Roasters, Inc., a privately-held company based in Miami and best known for the leading Hispanic brands Café Bustelo® and Café Pilon®, in the $360 million sale of its coffee brands and business operations to The J.M. Smucker Company.
· Intellectual Property counsel for Seminole Indian Tribe of Florida in $965 million acquisition of Hard Rock Cafe/Hotel/Casino business and brand worldwide.
· Intellectual Property counsel for Arcos Dorados B.V. in $700 million acquisition and development licensing transaction with McDonald's, involving Latin American McDonald's franchises.
· Intellectual Property counsel for Falic Fashion Group, LLC in $60M acquisition of worldwide Perry Ellis trademark license for fragrances from Perry Ellis International.
· Intellectual Property counsel for California Higher Education Loan Authority (CHELA) in completing a more than $2.4 billion recapitalization, restructuring and spin-off transaction.
Publications & Presentations
Articles, Lectures & Publications
· Author, "Copyright Issues in Architecture," Southeast Real Estate Business, October 2004
· Author, "Federal Circuit Holds Business Methods Can Be Patented," South Florida Business Journal, October 30, 1998
· Author, "Patent Law Issues at the Pre-Application Stage," Presentation to BioFlorida, February 11, 1998
· Author, "Keep Quiet Before Applying for Patent," Fort Lauderdale Sun Sentinel, Miami Daily Business Review and Broward Daily Business Review, published several times in 1998
· Author, "The Doctrine of Equivalents is Alive and Well," Intellectual Property Today, April 1997
· Presenter, "Protecting Intellectual Property Assets Of Your Company," Lorman Noncompete Seminar, Miami, Florida, March 24, 2006