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Michael B. Fein

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Phone215.851.8539

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Practice Areas

  • Intellectual Property
  • Intellectual Property Litigation
  • Emerging Growth and Technology
  • Technology and Licensing
 
University University of Pennsylvania, A.B.
 
Law SchoolRutgers University Law School, J.D.
 
Admitted1967, New Jersey; 1970, Pennsylvania; U.S. Supreme Court; U.S. Court of International Trade; U.S. District Court for the District of New Jersey; U.S. District Court for the District of Columbia; U.S. District Court for the Eastern, Western and Middle Districts of Pennsylvania; U.S. District Court for the Middle District of Alabama; U.S. Court of Appeals for the Third, Fifth, District of Columbia and Federal Circuit; U.S. Patent and Trademark Office
 
Biography

Michael Fein focuses his practice on intellectual property matters, serving large corporations throughout the world as well as emerging companies whose technology is crucial to their business and individual inventors. He is a registered patent attorney representing clients on a full range of intellectual property matters. Michael has extensive experience in obtaining U.S. and international patent protection of inventions, enforcing and licensing patents, and avoiding infringement of competitors' patents. He has assisted clients in evaluating intellectual property assets and counseling on, structuring, negotiating and implementing acquisitions, licensing and collaboration agreements. His work includes global and U.S. license agreements, co-development agreements, supply agreements, co-promotion/co-marketing agreements, strategic alliance agreements and IP-intensive mergers and acquisitions. Michael also performs intellectual property diligence and evaluations of technologies, rendering freedom-to-operate, validity and patentability opinions.

Michael has represented clients in courts throughout the country in patent, trademark, copyright, and trade secret litigation in U.S. District Courts and appellate courts, and at the USPTO Board of Patent Appeals and Interferences.

Michael brings multiple perspectives to bear in representing his clients. He has worked both as outside counsel to small, medium and large companies, as in-house patent and trademark counsel at a Fortune 100 chemical company, and as a patent examiner at the USPTO where he received superior performance awards.

Representative Matters

· In re Clemens, 622 F. 2d 1029;

· Rohm & Haas Co. v. AZS Corp., 865 F. 2d 1273 (11 Cir., 1988);

· In re Kroekel, 803 F. 2d 705 (CAFC 1986);

· New Dana Perfumes Corp. v. Disney Store, Inc. (U.S.D.C., M. Dist. Pa., 2001);

· Work v. Bier, 107 F.R.D. 789 (U.S.D.C., D. DC);

· Rohm & Haas Co. v. Owens-Corning Fiberglass Corp., 196 U.S.P.Q. 726;

· Kroekel v. Shah, 558 F. 2d 29.

Professional Affiliations

American Intellectual Property Law Association

Licensing Executives Society

Philadelphia Intellectual Property Law Association

American Inns of Court - Benjamin Franklin Chapter

AIPPI - Association Internationale pour la Protection de la Propriété Intellectuelle

Community Involvement

Philadelphia Volunteers for the Indigent Project, former board member

Special Recognition

2011 Lawyer of the Year, Philadelphia Volunteer Lawyers for the Arts

Donges Award, Rutgers Law School (Camden)

Selected for inclusion in Pennsylvania's Super Lawyers

Articles/Speeches/Presentations

· "How to Jump Ahead of the Backlog of Patents Awaiting Examination," The Legal Intelligencer, September 28, 2011.

· "Patent Pools, Patent Misuse and Antitrust Rule of Reason Analysis," The Legal Intelligencer, November 2, 2010.

· "Newest judge takes on 'Cybor' rule," The National Law Journal, January 22, 2007.

· "Business Method Patents Are Here to Stay," The Legal Intelligencer, July 19, 2001.

· Various Presentations/Speeches at Annual Joint Patent Practice Seminars of NY, CT, NJ, and Philadelphia IP Law Associations.

 
ISLN907487829
 


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Office Information

Michael B. Fein
Eckert Seamans Cherin & Mellott, LLC
50 South 16th Street, 22nd Floor
Philadelphia, PA 19102




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