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Charles R. Macedo, Esq., a partner in the law firm of Amster, Rothstein & Ebenstein LLP, advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. Mr. Macedo, who frequently publishes papers and lectures on various topics, and has been the recipient of the prestigious AIPLA Robert C. Watson Award, was the sole law clerk to Hon. Daniel M. Friedman of the U.S. Court of Appeals for the Federal Circuit, 1989-1990.
Charles R. Macedo, a physicist by training, litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industries turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios.
Fluent in technical jargon spoken by inventors and clients, patentese spoken at the PTO, legalese spoken by courts and attorneys, business jargon spoken by management, and plain English, he seeks to translate complex subject matter into terms all can understand.
The author of The Corporate Insider's Guide to U.S. Patent Practice, Mr. Macedo has been cited as an authority on intellectual property issues by the Wall Street Journal, Dow Jones, BNA, Bloomberg, Inside Counsel, Managing Intellectual Property, Technology Transfer Tactics, IP Law 360, JIPLP and other media.
His patent experience encompasses a broad range of industries and products including Internet, e-commerce, content delivery and computer-enabled inventions; financial services, transaction processing, electronic wallets and virtual or synthetic currency, including Bitcoins and all other Alt-coins; Software-As-A-Service; social media; semiconductor and photomasks; green energy and power, including wind generators and batteries; construction materials and structures; life sciences; and apparel, to name a few. Mr. Macedo also has enforced and defended against trademark assertions and/or opposition proceedings for financial service providers, casinos and resorts, non-profit organizations, celebrities; cosmetic companies, luxury retailers of designer handbags and retail chains. He also advises clients on IP contracts, licensing, confidentiality agreements, terms of services and IP acquisitions and transfers.
By identifying vulnerabilities and considering variations on design concepts, Mr. Macedo helps clients develop strategies to maximize protection and prevent infringement challenges. He frequently serves as special counsel to companies seeking an IP strategy, not just a patent; to IP holders in anticipation of litigation and as coordinating counsel for multiple law firms.
He is consistently at the forefront of complex and emerging patent issues in the financial services and transaction processing industries. Clients ranging from international banks, broker dealers and new business ventures call on Mr. Macedo to develop patent strategies, prepare patents, assert rights and defend against infringement claims. His work includes developing and implementing patent strategies associated with such cutting edge financial innovations like bitcoins and other synthetic currency or math-based assets. His experience includes successfully defending the Discover Card division of Morgan Stanley from one of the earliest business method patent assertions, and leading the team to implement and enforce the deposit sweep patent portfolio for Island Intellectual Property LLC. He has also helped clients implementing insurance related products seek patent and other intellectual property protection.
His experience before the Patent Trial and Appeals Board and its predecessor Board of Patent Appeals and Interferences, including acting as leading counsel in inter partes review and covered business method proceedings, as well as advising and analyzing in the background. He also has represented patent owners in ex parte appeals, including reversals of obviousness rejections in Ex parte Buarque de Macedo.
Mr. Macedo writes prolifically and lectures regularly as he tracks and analyzes in real time the most important developments affecting IP strategy and litigation. As Co-Chair of the Amicus Committee of the New York Intellectual Property Law Association, Mr. Macedo has been principal counsel or additional counsel on amicus briefs in some of the leading patent cases of recent years, including Cuozzo (at Federal Circuit en banc petition, Supreme Court petition for certiorari and merits brief stage), Highmark and Octane (at the Supreme Court), Kimble v. Marvel (at the Supreme Court), Mayo v. Prometheus (at the Supreme Court), Association of Molecular Pathology v. Myriad Genetics Inc. (at the Supreme Court and the Federal Circuit), CLS Bank Int’l v. Alice (at the Federal Circuit en banc and at the Supreme Court in the petition and merits brief stage), and Akamai (at the Federal Circuit on remand). His appellate experience also includes petitions for mandamus, for rehearing before the U.S. Court of Appeals for the Federal Circuit and for certiorari to the U.S. Supreme Court on behalf of various clients.
He holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. He was the sole law clerk to Hon. Daniel M. Friedman of the U.S. Court of Appeals for the Federal Circuit, 1989–1990. The recipient of the prestigious AIPLA Robert C. Watson Award, Mr. Macedo is included in Super Lawyers, IP Stars and Million Dollar Verdict. He also was a member of the Editorial Board for the American Intellectual Property Law Association Quarterly Journal and currently serves on the Editorial Board for Journal of Intellectual Property Law and Practice published by Oxford University Press.
Charles R. Macedo, Esq. programs:
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MODERATED WEBCAST: The New Normal: 8 Steps to Seeing if Your Company Defends Customer Data
The Land of Lincoln (and Weed): An Analysis of Illinois’s Recreational Marijuana Law
Making Real Progress Towards Diversity and Inclusion in the Legal Profession
Attorney-Client Privilege in Government and Congressional Investigations: Key Considerations and Recent Developments
Prenuptial Agreements in 2019: What Every Lawyer Should Know
More Courts Are Applying IPR Estoppel Expansively
One Ring to Rule Them All: The Changing US Legal Landscape in Cybersecurity and Data Privacy
Emerging Trends in Corporate Internal Investigations
Don't Freeze Up: Know What to Do When ICE Comes Knocking
An Overview of Shareholder Derivative Litigation Principles and the Impact of Director and Officer Indemnification Agreements