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JOEL S. GOLDMAN

Areas of Practice:

Patent, Trademark and Copyright Prosecution; Litigation; Client Counseling and Technology Licensing and Development Agreements

Education:

Fordham University (J.D., 1977)  
(Member Fordham Law Review)  
New York University (B.E.E., 1962)

Professional Experience:

Founder - Goldman IP Law - 2001-Present  
Partner, Troutman Sanders, L.L.P., 1988-2000  
Chief Patent Counsel, Scientific-Atlanta, Inc., 1985-1988  
Associate, Darby & Darby, P.C. (New York), 1977-1984  
Staff Engineer, IBM Corp., 1962-1977

Sample Representations:

INTER PARTY MATTERS:

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Lead counsel for Alpex Computer Corp. (holder of early patent for video game cartridges) in litigation and licensing program

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Negotiated patent licenses with North American Phillips, Atari, Inc., IBM Corp., and Mattel, Inc., among others.

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Lead counsel for Zellweger Uster GmbH. (Switzerland) in arbitration involving patent on fiber processing machines.

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Lead counsel for Church Chair Industries in patent litigation involving design patents.

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Counsel for various clients in patent litigations involving aircraft avionics and radio-telephone systems.

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Counsel for Process Technology, Int’l in defense of patent infringement case related to burners in electric arc furnaces for making steel.  

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Counsel for ICF Kaiser, Inc. in defense of patent infringement case involving sort/merge software.  

COUNSELING MATTERS:

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Drafted and prosecuted patent applications in technologies ranging from wood pulp processing machinery and centrifuges to complex electronic devices and software systems.

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Established patent department at Scientific-Atlanta, Inc. and developed strategies and programs for protection of intellectual property, enforcement of intellectual property rights against others and defense against infringement claims.  Negotiated major technology development and licensing agreements involving satellite and cable telecommunication technologies with companies such as Comsat, British Telecom and Matsushita Industries.

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Established and led Patent and Trademark Department at Troutman Sanders, L.L.P.  Grew department to over twenty attorneys.

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Counsel for The Step Company, developer of the leading aerobic platform apparatus.  Developed and implemented strategy for international protection of intellectual property rights and international licensing.  Represented The Step Company in patent infringement litigation and in trademark dispute with Reebok International.

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Counsel for The Southern Company and Worldcom Communications in connection with various technology license and development agreements.

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Counsel for IBM Corporation, Dun & Bradstreet Software Services, Inc., Pilot Software, Inc. and Hitachi Telecom in regard to patent protection of software.  

Bar Activities and Legal Associations:                                

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State Bar of Georgia (Chairman, Patent, Trademark and Copyright Section 1993-1994) (Chairman, Special Committee for drafting Georgia Trade Secrets Act of 1990)

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American Intellectual Property Law Association (Chair - Asia Practice Committee)

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American Bar Association (Member, Patent, Trademark and Copyright Section)

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Licensing Executives Society (Chairman, Atlanta Chapter, Vice Chair, Peoples Republic of China Committee)

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International Federation of International Property Counsel (FICPI),  Member, U.S. Section

Admitted to Bar:

New York, 1978  
United States Patent and Trademark Office, 1978  
Georgia, 1987  

Recent Publications:               

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“New Regulations May Heighten Enforcement of Intellectual Property Rights in China,” Intellectual Property & The Law (Summer 1998)

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“Patentability of Business Methods,” Intellectual Property & The Law (Fall 1996)

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“Building a Flexible Practice Group Structure,” Law Firm Governance (Summer 1999)

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“The State Street Bank Case -- Its Implications to Financial Institutions,” Intellectual Property Today, (January 1999)

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“Yes, Your Method of Doing Business is Patentable (Increased Protection for Software Inventions),” Intellectual Property & The Law (Winter 1999.)

Speaking Engagements:

Numerous speaking engagements in U.S. and Asia primarily in the areas of software patents, business methods patents, and U.S. intellectual property protection for Asian companies and structuring of intellectual property protection policies and procedures.

 

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