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CHARLES A. WEISS
( Partner, Kenyon & Kenyon LLP )

Bio

Charles A. Weiss concentrates his practice on technology-driven litigation, counseling, and transactions. He also counsels clients on questions of patent validity and infringement and provides a litigator’s perspective on prosecution matters. Mr. Weiss primarily works in the pharmaceutical, chemical and biotechnology areas. He has litigated patent, trade secret, and false advertising cases involving matters such as the expression of recombinant proteins, controlled-release pharmaceuticals, medical diagnostic agents, endocrine and hormone products, nutritional supplements, food chemistry and processing, high-caustic detergents, pipe liners, and tube fittings. He also has substantial experience in the investigation of product counterfeiting and pursuit of those responsible. Mr. Weiss is very active in the firm's appellate practice. Mr. Weiss also enjoys a diverse nonlitigation practice, with an emphasis on supporting transactions in which a substantial value is attributed to a party’s patent position, such its ability to exclude competitors or to bring its product to market free of meritorious infringement claims by others. He has negotiated and drafted hundreds of licenses and other agreements, including commercial collaboration, joint research, and product acquisition agreements. Following his graduation from law school, Mr. Weiss clerked for the New Jersey Supreme Court. After his clerkship and before joining Kenyon & Kenyon, Mr. Weiss worked for several years at a large general practice firm and gained wide experience in varied commercial matters, including corporate and securities transactions, contract litigation, insurance and banking disputes, construction litigation, accounting and attorney malpractice, and the conduct of investigations into employee malfeasance and fraud. Mr. Weiss is an adjunct professor at New York Law School, where he designed and teaches a course on patent litigation and analysis.


Click Here for Trade Secrets and Licensing Agreements Slides

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Deborah A. Somerville
( Partner, Kenyon & Kenyon LLP )

Bio

Deborah A. Somerville is a partner of Kenyon & Kenyon in their New York office and has substantial experience in the management, protection and enforcement of intellectual property rights for major U.S. and foreign clients. Her practice focuses on the issues confronting clients in the pharmaceutical, biotech, chemical and medical device industries. Ms. Somerville counsels clients on the validity, scope, enforceability and transfer of intellectual property rights. She actively guides clients in introducing new products and in developing intellectual property strategies and portfolios. While successfully procuring commercially significant patents, she has supervised the drafting of applications and their prosecution, including inter parties proceedings. She also negotiates licenses and conducts due diligence for major corporate transactions. In addition, Ms. Somerville has considerable experience in patent litigation before the federal courts. Ms. Somerville's combination of experience enables her to provide legal advice that considers the full range of issues and options available to clients. Representative clients include biotech companies and research hospitals, as well as manufacturers of pharmaceuticals, polymers and specialty chemicals. Ms. Somerville is currently a co-chair of the Kenyon & Kenyon Life Sciences/Chemical Practice Group. She is involved in the New York Intellectual Property Law Association, the ABA (Intellectual Property Law and Litigation Sections) and the AIPLA. She is also a member of the New York Academy of Science. Ms. Somerville is a co-author of several articles of interest to her practice, including: Getting Creative: From IP to IPO, January 2005, Developments in US Biotech: Focus on Research Tool Patents, 2004, NASDAQ, The Value of Research Tool Patents in View of Integra v. Merck, The Intellectual Property Strategist, August 2003, and The Biotech Patent: To License or Litigate, November 2003, NASDAQ.




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Reference and Readings


TRADE SECRETS


http://library.findlaw.com/1999/Jan/1/241479.html

http://www.nolo.com/lawcenter/ency/article.cfm/objectid/90781CA8-0ECE-4E38-BF9E29F7A6DA5830/
catID/1FBE2D95-203C-4D38-90A2A9A60C6FD618

http://library.lp.findlaw.com/articles/file/00982/008856/title/Subject/topic/
Intellectual%20Property%20Law_Trade%20Secrets/filename/intellectualpropertylaw_1_238


LICENSING


http://www.kenyon.com/files/tbl_s47Details/FileUpload265/506/A%20few%20common%20problems.pdf

http://www.kenyon.com/files/tbl_s47Details/FileUpload265/455/ip%20issues.pdf

http://www.kenyon.com/files/tbl_s47Details/FileUpload265/710/Licensing%20in%20the%20Boardroom%202007.pdf

http://www.justice.gov/atr/public/guidelines/0558.htm

http://archive.infoworld.com/articles/ca/xml/01/03/26/010326calist.xml

http://www.bna.com/corp/license.htm

http://en.wikipedia.org/wiki/Software_license