AREA OF PRACTICESHOW MORE
Mark Leonardo’s practice encompasses all areas of intellectual property, including commercial exploitation and management of patent portfolios, patent and trademark procurement, and opinion counseling on complex legal and technical issues. He assists clients in developing comprehensive and strategic patent portfolios that maximize a company’s competitive advantage; negotiating technology development, licensing and technology transfer agreements; trade secret and unfair competition counseling; and conducting intellectual property portfolio reviews for technology-driven companies.
Mark has been able to bring a breadth of real world experience to his clients by routinely acting as "in-house" intellectual property counsel on an as needed basis. In doing so, Mark has been able to provide unique legal assistance in overseeing the development of intellectual property policies and strategies for client companies and individual business units, including interfacing with general counsel, division executives, and research and product development departments. As in-house intellectual property counsel, Mark routinely assists his clients with analyzing, negotiating and counseling on various transactions and agreements; analyzing competitor product lines including developing and implementing offensive and defensive strategies; as well as review of and advice on sales, advertising and promotional materials and programs.
Mark advises in-house attorneys, business executives and individual proprietors on trademark, trade dress, copyright and advertising issues relating to clearance, enforcement, infringement, fair use, works for hire, domain names, privacy and publicity rights, promotional campaigns and product packaging claims.
Mark manages large, worldwide portfolios of well-known sporting and luxury goods, apparel and other trademarks; supervises investigations of infringers; and negotiates licenses and other agreements. He also conducts due diligence reviews of domestic and foreign intellectual property relating to corporate acquisitions and divestitures and secured transactions.
Mark is particularly active in counseling clients in connection with the acquisition and protection of intellectual property rights in corporate transactions, including strategies for protecting their organization’s intellectual property, evaluating the intellectual property of their prospective business partners, assessing merger candidates, corporate due diligence, and intellectual property investigations in conjunction with private venture financing, public offerings, mergers, acquisitions and divestitures.
Additionally, Mark represents high technology companies in areas of complex patent litigation. He has advised both plaintiffs asserting their patent rights, and defendants opposing charges of patent infringement. Work on patent litigation and litigation counseling has been in the areas of medical devices, mechanical instruments, and consumer products.
Prior to his work at the Firm, Mark was a Patent Examiner in the Electro-Mechanical and Biomedical Arts Groups at the United States Patent & Trademark Office.
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