Advisory Board

 

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Barton Beebe

Professor of Law, New York University School of Law

Barton Beebe is the John M. Desmarais Professor of Intellectual Property Law at New York University School of Law, where he specializes in the doctrinal, empirical, and cultural analysis of intellectual property law. He has been the Anne Urowsky Visiting Professor of Law at Yale Law School and a Visiting Professor of Law at Stanford Law School. He has also taught courses at the Centre d’Études Internationales de la Propriété Intellectuelle at the Université de Strasbourg, the Munich Intellectual Property Law Center, the State Intellectual Property Office of the People’s Republic of China, and the Hanken School of Economics in Helsinki, Finland. In 2007, Professor Beebe was a Special Master in the case of Louis Vuitton Malletier v. Dooney & Bourke, Inc., No. 04 Civ. 2990 (SAS) (S.D.N.Y.). His published works include Intellectual Property Law and the Sumptuary Code, 123 Harvard Law Review 809 (2010), and An Empirical Study of U.S. Copyright Fair Use Opinions, 1978-2005, 156 Pennsylvania Law Review 549 (2008). Professor Beebe received his J.D. from Yale Law School, his Ph.D. in English Literature from Princeton University, and his B.A. from the University of Chicago. He clerked for Judge Denise Cote of the United States District Court for the Southern District of New York.

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Pierre Véron

Véron & Associés

Pierre Véron is a member of the Paris Bar.

His 14 lawyer firm, with offices in Paris and Lyon, deals only with patent litigation, with a special emphasis on international cases.

Pierre Véron is the Honorary President of EPLAW, the European Patent Lawyers Association, which he founded in 2001, and of the French association of patent litigators (Association des Avocats de Propriété Industrielle); he has taught for many years European patent litigation at the CEIPI (International Centre of Industrial Property Studies) in Strasbourg. Since 2007, he has served as an expert with the European Commission for projects involving the European Union patent court.

Pierre Véron is the editor of Saisie-contrefaçon, a book published by the leading French publisher Dalloz (3nd edition 2012) and of Concise International and European Intellectual Property Law, published by Kluwer Law International (2nd edition 2011); he is also the author of many publications on patent litigation and on industrial property law.

Full bio

Sir Robin Jacob - UCL Moot Court sideways

The Rt. Hon. Professor Sir Robin Jacob

Faculty of Laws, UCL. Retired Judge of the Court of Appeal of England and Wales

Sir Robin joined the Faculty of Laws in May 2011 leaving the Court of Appeal of England and Wales to do so. Having read Natural Sciences at Cambridge, Sir Robin then read for the Bar (Grays Inn). He started practice at the Intellectual Property Bar in 1967. From 1976 to 1981 he was the Junior Counsel for the Comptroller of Patents and for all Government departments in intellectual property. He was made a Queen’s Counsel in 1981. His practice took him abroad often (Hong Kong, Singapore, Europe, USA, and Australia). He was appointed a High Court Judge (Chancery Division) in 1993. From 1997 to 2001 he was Supervising Chancery Judge for Birmingham, Bristol and Cardiff. He was appointed a Lord Justice of Appeal in October 2003. He was Treasurer of Grays Inn in 2007. He continues to sit from time to time in the Court of Appeal and will sometimes act as an arbitrator or mediator.

He has written extensively on all forms of intellectual property. He often lectures, mainly but not only on IP topics, both in the UK and abroad.

Full bio

MarshallPhelps

Marshall C. Phelps, Jr.

Advisor

Mr. Phelps has been and is a consultant and advisor to many international companies including GE, PriceWaterhouseCoopers, SAP, Samsung and Boeing. He also served on the Intellectual Property Committee of the National Academies of Science and seven boards of directors. He is a recognized expert on the management and monetization of intellectual and intangible assets, entrepreneurship and innovation. He has written and spoken extensively on these subjects at numerous business forums and universities, including Duke Business and Law Schools, The University of California at Berkeley, Cornell Law School, The University of Washington, and Keio and Waseda Universities in Japan. He recently served as Executive in Residence at Duke’s Fuqua School of Business and served on its Board of Visitors. He was recently named Distinguished Practitioner in Residence at Cornell Law School. In 2006, he was elected to the initial class of the Intellectual Property Hall of Fame. His book, “Burning the Ships”, Intellectual Property and the Transformation of Microsoft, was published in 2009.

Until recently, Mr. Phelps was Corporate Vice President, Deputy General Counsel for Intellectual Property and Licensing and Assistant Secretary, Microsoft Corporation. At Microsoft, his duties entailed worldwide management of Microsoft’s intellectual property portfolio, patent prosecution, licensing, standards and business development. Microsoft is one of the world’s largest intellectual property companies with over 60,000 patents extent or applied for, countless trademarks and extensive copyright holdings.

His career follows:

1969-70. Confidential Clerk, New York State Supreme Court,
1970-71. Attorney, IBM,
1971-72. Assistant to the President, Chicago Board of Trade,
1972-77. Attorney/ Area Counsel IBM,
1977-80. Principal resident IBM Attorney for antitrust defense, San Francisco,
1980-81. Sloan Fellow, Stanford University Graduate School of Business,
1981-82. Assistant to IBM CEO’s Frank Cary and John Opel,
1982-83. Managing Attorney, IBM,
1983-84. Counsel, IBM’s Systems Product Division,
1984-87. Vice President IBM Asia Pacific Group,
1987-92. IBM Director, Government Relations,
1992-99. IBM Corporate Vice President.
– Upon retirement in September 1999, he received IBM’s “Career Achievement Award”, one of two granted as of that time,
1999-01. Chairman and CEO, Spencer Trask Intellectual Property Co.,
2001-03. Partner, Intellectual Ventures,
2003-09. Corporate Vice President, Microsoft.

Mr. Phelps holds a B.A. and D.HL from Muskingum University, an M.S. from Stanford University School of Business, and a J.D. from Cornell Law School.

michael elmer

Michael C. Elmer

Sr. Counsel Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Michael Elmer has more than 40 years of litigation experience at Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP in virtually every aspect of intellectual property law. While most of his career has been focused on litigating high-profile patent cases, he has also litigated trademark, trade secret, trade dress, copyright, and related antitrust matters.

After opening the firm’s Palo Alto, California, office in 1998, Mr. Elmer recognized the need for the development of global patent litigation win rate data and created the Global IP Litigation Project. This led to the writing of “Global Patent Litigation: How and Where to Win,” scheduled for publication in January, 2014, by Bloomberg BNA. The centerpiece of the project has been the development of data containing win-rate statistics on international patent litigation provided by a network of participating law firms from 30 countries. The project’s purpose is to assist clients in resolving international patent disputes and implementing global offensive and defensive strategic plans, including forum-shopping and claim valuation. Mr. Elmer has lectured extensively in the United States and abroad on global patent litigation, including the resolution and evaluation of international patent disputes.

Mr. Elmer is an adjunct Professor at the University of Washington Law School in Seattle where he teaches Global Patent Litigation. He is also an adjunct Professor at the University of South Carolina Moore International School of Business where he teaches a class in The Business of Global Patent Litigation. Mr. Elmer is recognized as being “first rate at coordinating global patent litigation, in particular implementing global offensive and defensive strategic plans” in Who’s Who Legal’s Most Highly Regarded Firms: Patents 2013.

Prior to joining Finnegan in 1973, Mr. Elmer served in the US Army JAG Corps, where he spent two years as Secretary of the Armed Services Patent Advisory Board and assisted the Department of Justice defending patent infringement claims against the US Government. In his last two years he served as Chief Trial Counsel at Ft. Ord, California, where he prosecuted criminal cases under the Uniform Code of Military Justice.

Evelyne Roux

Evelyne Roux

Regimbeau

Evelyne Roux, Partner at Regimbeau, Head of the Legal Department, is qualified both as a lawyer and as a patent attorney, with expertise in international litigations and comprehensive knowledge of world asset portfolios.

She has developed a global approach in all creative or innovative sectors she is involved in. She is thus particularly well-placed to advise businesses and public organizations making use of intellectual property tools not only to defend their own interests, but also to conquer new markets. She has more than 20 years of experience as Trademark and Patent Attorney.

Evelyne Roux is highly involved in the training of young professionals. She is a Lecturer at CEIPI and at Institut d’Etudes Politiques and a Member of the Board for examination for qualification of the French Trademark Attorneys.

She is Member of the AIPPI and of the Chamber of Discipline of the CNCPI, as well as in the main international organizations INTA and ECTA.

Full bio and list of recent publications

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Alexander von Mühlendahl

Bardehle Pagenberg

Alexander von Mühlendahl began his career at the Munich Max Planck Institute for Foreign and International Patent, Copyright and Competition Law, where he was from 1966 to 1979 (including three years at Northwestern University School of Law). From 1970 he headed the Institute’s U.S. Department.

In 1979 Alexander von Mühlendahl joined the German Federal Ministry of Justice. From 1985 until 1994, he was the head of the division for trade mark and unfair competition law. Among the legislation for which he was responsible were amendments to the German Unfair Competition Act, the IP legislation following the unification of Germany in 1990 (the ‘Erstreckungsgesetz’ of 1992) and the new German Trade Mark Act of 1995. Throughout this period he represented the German government in the negotiations in Brussels on the European trade mark law, as well as in WIPO matters.

In 1994 Alexander von Mühlendahl was appointed as Vice-President of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), the European Union’s trade marks and designs office established in Alicante, Spain. The appointment was renewed in 1999 and 2004 and ended in 2005 when he reached retirement age. His primary responsibilities included all legal matters, such as examination, opposition, cancellation, and also the representation of OHIM in cases before the European Court of Justice and the Court of First Instance.

In November 2005 Alexander v. Mühlendahl joined the Bardehle Pagenberg firm where he focusses on trade mark and design matters, based in Munich and in Alicante.

Alexander von Mühlendahl is Honorary Member of ECTA, the European Communities Trademark Association and Honorary Member of the Hungarian Trademark Association.

Full bio

Paul Lange

Paul Lange

Siebeke Lange Wilbert

Prof. Dr. Paul Lange is an attorney-at-law with Siebeke Lange Wilbert specialising in national and international law on trade marks and sign protection since 1984. In 2000 he was appointed honorary professor of industrial property law. He principally advises clients on issues of trademark law, international safeguarding of corporate goodwill, strategic optimisation of corporate brand launches as well as conducting litigation. He is author of the standard German work on the law of trade marks and sign protection entitled “Marken- und Kennzeichenrecht”. He is also the editor and co-author of “Internationales Handbuch des Marken- und Kennzeichenrechts”. This also appeared in the English language under the title “International Trade Mark and Sign Protection: A handbook”.

List of publications

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Charles Gielen

Nauta Dutilh

Charles Gielen concentrates on patent and trademark litigation. He is a part-time professor in IP law at Groningen University and has authored various IP handbooks. Charles is a member of the Executive Committee of the International Association for the Protection of Industrial Property (AIPPI) and acts as Chairman of the Special Committee on Biotechnology. He is the past President of the Dutch group of AIPPI; recently he has been appointed Member of honour of this association. Furthermore he is a member of the standing advisory committee to the Dutch Government on trademark and design law.

In 2006, Professor Charles Gielen received the INTA President Award, one of the highest honours given to intellectual property practitioners.

Charles graduated from Tilburg University in 1971 and obtained his doctorate degree at Utrecht University in 1991.

Full bio
List of publications
List of case comments

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Marc Frisanco

Internet Assets Management

From 1978 to 1982 in France
Marc was in private practice and worked in Paris as an Intellectual Property lawyer .

From 1983 to 2011 in Switzerland
Marc worked in-house in Geneva for the Richemont luxury group . Developing a culture of return on investment by leveraging the value of Intellectual Property , he contributed to the successful development of the in-house IP department servicing the group’s Maisons.

From 2013 in China
Marc created a JV Internet Assets Management that offers an holistic strategic approach to the protection of Intangible Assets in China . In particular thanks to proprietary technical tool , it provides a monitoring service of the Internet and offer legal remedies to companies in need of embracing the ubiquitous Internet and its Chinese distinctive e commerce / social component After obtaining an advanced degree in intellectual property from the Robert Schuman University in Strasbourg, Marc Frisanco spent four years in private practice before joining Cartier as head of intellectual property in 1982. He is currently Deputy Chief Intellectual Property Counsel of Richemont, a luxury goods company which owns seventeen famous brands including Cartier, Montblanc, Van Cleef & Arpels and Vacheron Constantin.

Marc has been involved with intellectual property protection and anticounterfeiting, in particular at a global level, for more than 25 years.

He is a frequent guest lecturer at the Robert Schuman University in Strasbourg and the Institut Suprieur de Marketing de Luxe in Paris.

michael_edenborough

Michael Edenborough QC

Serle Court

Michael Edenborough QC is a barrister. His practice principally involves appellate advocacy and advice concerning the validity of registered intellectual property rights such as patents, trade marks and designs. He also deals with other issues such as infringement, subsistence and ownership of those registered rights and the related unregistered IPRs such as copyright, moral rights, design right and passing-off.

He has acted for the Comptroller-General of Patents, the Registrar of Trade Marks and the UK Government before the Court of Justice of the European Union, the House of Lords, the Court of Appeal and the High Court (Chancery Division, Patents Court and Administrative Division) on, inter alia, appeals from, and Judicial Reviews of, the Patent Office and the Registry. He has appeared regularly before the General Court of European Union (formerly the Court of First Instance), Luxembourg on appeals from the European Trade Marks and Designs Office (OHIM), and on Article 267 TFEU references and appeals to the Court of Justice; and acted before both the legal and technical Boards of Appeal of the European Patent Office.

Full bio
List of cases
List of publications