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Mark MontaguePartnermxm@cll.com212.790.9252 |
Mark is a patent attorney registered to practice before the U.S. Patent & Trademark Office. Mark focuses on the handling of all patent matters, including the preparation and prosecution of patent applications in the electrical, electronic, computer, business method and mechanical arts before the U.S. Patent & Trademark Office, patent litigation, patent licensing, patent due diligence studies, patentability, infringement and validity studies, and counseling in other areas of intellectual property including trademark, trade dress, copyright and trade secret protection and enforcement.
New York State Society of Certified Public Accountants v. Eric Louis Associates, successfully obtained a temporary restraining order against defendant and was granted summary judgement of trademark infringement and dilution and an award of attorneys' fees in one of the first Internet cases involving the unauthorized use of plaintiff's trademark as a domain name and as a meta-tag.
Patent applications prepared and prosecuted are in a wide-range of electrical, electronics and computer-related areas, including software and Internet-related inventions, computer hardware, business methods, optics, lasers, disk drives, CD-ROM and CD read/write technology, video cameras, digital video tape recorders, high definition television, cellular telephony, digital signal processing, magnetic circuits, electro-mechanical devices and complex mechanical systems.
McAulay, Nissen, Goldberg & Kiel, LLP, Partner (2000), Senior Associate (1997-99)
Curtis, Morris & Safford, PC, Associate (1993-97)
Co-author, Advising High Technology Companies, Chapter on Intellectual Property, Practising Law Institute (Revised Annually 2004-Present)
Speaker, Purchase College, 'Patents & Copyrights: Conflicting or Complementary Forms of Intellectual Property Protection?' (Annual Speaker 2004- Present)
Interview, 'RIM's Day of Judgment,' article published in the Canadian daily newspaper 'The Record' (February 24, 2006)
Interview, The 'BlackBerry' Patent Infringement Litigation: NTP v. Research in Motion, by the British Broadcasting Company, Broadcast on BBC World News (Dec. 2, 2005)
Speaker, Canadian IT Law Association Annual Conference, IP Law Update Panel, 'Select Developments in U.S. Patent Law: Cross-Border Application of U.S. Patents' (Oct 2005) Click here for paper. Click here for presentation.
Program Chair and Speaker, 'Business Methods and Software Patent Developments in the United States,' NYU School of Continuing & Professional Studies CLE Program, Intellectual Property in the 21st Century (Nov 2002)
Speaker, AIPLA Advanced Computer and Electronic Patent Practice Seminar, Limitations: Guidelines for Preparing the Written Description and Claims, and USPTO Examination Guidelines' (Jun 7, 2002)
Co-author, 35 U.S.C. §112, ¶ 6 Limitations: Guidelines for Preparing the Written Description' (presented at the Advanced Computer and Electronic Patent Practice Seminar Sponsored by the American Intellectual Property Law Association June 2002)
Co-author, 'Strategies to Defer Costs of Patenting - Use Provisional, 'PCT' Applications' (New York Law Journal - Silicon Alley Special Section, Mar 5, 2001)
Speaker, Ardsley School District - Inventor's Club, 'Patenting Inventions' (Annual Speaker 2002-Present)
Speaker, Purchase College, 'Patent Issues Relating to the Internet' (Nov 1999)
Adjunct Professor of Patent Law & Trade Secrets at New York University School of Continuing & Professional Studies (2002-present)
New York State Bar Association - Member, Intellectual Property Law Section
American Bar Association - Member, Intellectual Property Law Section
New York Intellectual Property Law Association - Member
American Intellectual Property Law Association - Member
International Intellectual Property Law Association - Member
Computer Law Association - Member
Touro College Jacob D. Fuchsberg Law Center (JD 1993; Merit Scholar; Dean's List; Winner, Nathan Burkan Memorial Writing Competition)
Polytechnic University (Graduate Studies in Electrical Engineering 1989)
State University of New York at Stony Brook (B.E. Electrical Engineering 1989; HKN E.E. Honor Society; Tau Beta Pi, Eng'g Honor Society; I.E.E.E.)
New York
New Jersey
U.S. Court of Appeals - Federal Circuit
U.S. District Courts - Southern and Eastern Districts of New York
U.S. District Court - District of New Jersey
U.S. Patent and Trademark Office