Samuel W. Apicelli

Samuel W. Apicelli

Samuel W. Apicelli concentrates his practice in all aspects of patent, trademark and copyright procurement and enforcement.

Mr. Apicelli provides strategic guidance to executive management on the development and commercialization of products and services and the implementation of patent strategies. He assists investors in negotiations and transactions involving intellectual property, including due diligence reviews of patents and trademarks, and assists parties in mergers and acquisitions involving intellectual property of all types. He regularly performs intellectual property audits to identify or locate intellectual property assets, including patents or patentable subject matter, copyrights, trademarks, domain names and trade secrets. Mr. Apicelli is often called upon to assist in the development and sale of intellectual property rights and licensing and financing for technology for a wide variety of companies. He also prepares intellectual property opinions of counsel, responds to patent demand letters and regularly assists in the settlement of adverse claims.

Mr. Apicelli's engineering and patent preparation and prosecution experience includes: electrical/electronic engineering related to interconnection technology; the mechanical design of electronic systems; high speed metal stamping tools and systems; polymer molding tools and systems; high speed parts assembly machines and systems; fabric and garment fabrication methods and machines; and semiconductor device packaging and interconnection. Mr. Apicelli has written and prosecuted well over 350 patents in a variety of technical disciplines related to mechanical and electrical engineering and has been awarded three patents for his own inventions.

With respect to his trademark experience, Mr. Apicelli has prepared, filed or prosecuted over 650 trademark applications before the U.S. Patent and Trademark Office and foreign trademark offices. He provides a comprehensive service on an international basis in the areas of trademarks, unfair competition, false advertising and the Internet. Mr. Apicelli's foreign trademark practice regularly includes the creation, maintenance, and exploitation of trademarks in Europe via the European Community Trademark Office and in individual country trademark offices. Mr. Apicelli also regularly provides due diligence audits related to trademark and other IP assets in the U.S. and abroad as required for sale, acquisition and securitization of those assets. His international work experience allows him to provide unique practical advice and counsel to companies in selecting, clearing and protecting trade dress, trademarks and domain names on a global basis. Mr. Apicelli has represented many clients in all aspects of the enforcement of their intellectual property rights in U.S. federal courts and administrative agencies, such as the USPTO, as well as before administrative agencies such as the European Community Trademark Office and individual country trademark offices, with the assistance of qualified foreign counsel.

Prior to practicing law, Mr. Apicelli worked for 12 years for AMP Inc., where he was a mechanical/electrical product development engineer, an international product and development engineering manager and later Director of Engineering for Southern Europe, Latin America and Asia Pacific operations. As Director of Engineering, Mr. Apicelli was based in London where he administered and had profit and loss responsibility for numerous product and manufacturing development programs. He acted as an advisor to the international management teams for the preparation of their yearly business plans. He also was a member of the corporation's Intellectual Property Management committee. One of Mr. Apicelli's duties in Europe and Asia was to work with the AMP's tax advisors to negotiate transfer pricing, royalties, and tax holidays with foreign tax authorities that were based upon or supported by technology transfer to those countries, as substantiated by AMP's foreign patent and trademark portfolio.

Representative Matters

· Evco Technology & Development Co. LLC v. Buck Knives, Inc., et al. - patent infringement litigation regarding compound hunting bow technology.

· Rudd v. Lipidex Corporation - patent infringement litigation between licensor and licensee over ventilation technology.

· Howmedica Osteonics v. Wright Medical Technology, Inc. - patent infringement litigation concerning artificial knee implant technology.

· J.P. Donmoyer, Inc. v. Building Materials Corporation of America d/b/a GAF Materials Corporation, and D.M. Bowman, Inc. - patent infringement litigation regarding off-site dry-bulk storage monitoring technology.

· Wright Medical Technology, Inc. v. OsteoImplant Technology, Inc. - patent infringement litigation concerning modular hip replacement prostheses.

· Woodlark Circle, Inc., et al. v. Stryker Corporation, et al. - trademark infringement litigation concerning use of a footprint silhouette mark on patient transfer mattresses.

· Wound Care Strategies, Inc. v. Wound Care Centers, Inc. - trademark infringement litigation regarding conflict use of similar names.

· Maid-Rite Steak Company, Inc. v. Maid Rite Corporation - trademark infringement litigation regarding conflict use of similar names.

· Doeblers' Pennsylvania Hybrids, Inc. v. Doebler, et al. - trademark infringement litigation regarding conflict use of similar names.

· Cap Index, Inc. v. Intelligent Direct, Inc., et al. - copyright infringement litigation concerning crime mapping software.

Professional Activities

· Vice Chairman, Board of Advisors for the Kutztown University Small Business Development Center

· Pennsylvania Bar Association

Selected Publications

· Co-author, "Running Naked: Overcoming Rogue Franchisees," Franchise Times, October 2008

· Co-Author, "When 'Will' Won't Do In Employment Agreements," Law 360, September 22, 2008

· "Strategic Alliances," Counsel to Counsel, August 1, 2008

· With other Duane Morris lawyers, Sam wrote "Five Legal Issues Your Company Should Worry About (But Probably Doesn't)", which appeared in the November 2006 issue of Skylights, the in-flight magazine of Spirit Airlines. Sam's section discussed "patent mapping," the process of monitoring the patent portfolios of competing businesses to discern long-term trends and business strategies.

· "Goose or Egg," a chapter in The Patent Leadership Conference, Top Partners on Best Practices & Winning Legal Strategies for Managing Patent Portfolios, Executive Leadership Series, ReedLogic Corporation 2006

· "Of Better Mousetraps and Beaten Paths," a chapter in The Art and Science of Patent Law, Aspatore Press, Boston 2004

· Profiled in "Inventing Success," Susquehanna Style Magazine, February 2002

Selected Speaking Engagements

· Moderator, "Let's Not Give it Away; Patents, Trademarks, Copyrights & Intellectual Property," Innovations Partnership's Conference for Science and Technology Entrepreneurs

· "The Business of Art: Copyrights, Contracts and Intellectual Property," seminar sponsored by Jump Street, Harrisburg, Pennsylvania

· "Security Interests in Intellectual Property," Pennsylvania Bar Institute's Business Lawyers' Institute, Philadelphia, Pennsylvania

· "Security Interests in Intellectual Property," Commercial Document Series, PBI, Philadelphia, Pennsylvania and Pittsburgh, Pennsylvania

· "Strategies for Inventors" and Internet/E-biz Risks," Central Pennsylvania Entrepreneur and Growth Company Day, Hershey, Pennsylvania

· "Intellectual Property for Small Businesses and Entrepreneurs," Murata Business Incubator, Carlisle, Pennsylvania and Kutztown Small Business Development Center, Dixon University Center, Harrisburg, Pennsylvania

· "Patents, Trademarks and Copyrights," Central Pennsylvania Entrepreneurial Development Center, Harrisburg, Pennsylvania

· "Patents, Trademarks and Copyrights," Pennsylvania Chamber of Commerce, E-Commerce Symposium, Harrisburg, Pennsylvania