Intellectual Property and Technology

Cohen & Gresser handles a wide range of intellectual property and technology matters. Our transactional lawyers conduct IP due diligence in connection with joint ventures, asset purchases, and mergers and acquisitions, and negotiate and draft a variety of licensing, collaboration, and technology-related agreements. Our litigators have experience in trademark, copyright, trade secret, and unfair competition litigation and advise clients on internet privacy issues, data security, and technology law.

Due Diligence and Corporate Advice

Our attorneys provide a full range of services and counseling in connection with corporate transactions.  We evaluate third-party trademark, copyright and patent holdings for possible acquisition, conduct due diligence assessments on intellectual property aspects of mergers and acquisitions, and negotiate agreements transferring title and rights to intellectual property.  We also advise clients on technology-related risk analysis within the context of corporate transactions.

In collaboration with the firm’s other practice groups, we also advise companies on a broad range of life cycle issues, including formation, seed and venture capital, financing, private and public equity, mergers and acquisitions, real property acquisition and lease negotiation, litigation, and compensation and employment matters.

Licensing and Technology Agreements

C&G represents companies at all stages of growth in developing, commercializing, and transferring technology-related intellectual property.  We structure agreements between domestic companies and their foreign counterparts, including joint ventures, territorially defined licensing arrangements, multi-state distributorships, and equity arrangements.

Trademark Law

Our trademark attorneys evaluate prospective trademarks for both clearance and availability for use and handle opposition and cancellation proceedings before the Trademark Trial and Appeal Board. We also represent clients in trademark infringement litigation, including ex parte seizure orders, temporary restraining orders, and preliminary injunctions in federal and state courts, and we regularly counsel our corporate clients on the protection and enforcement of their trademarks.

Copyright Law

Our copyright attorneys protect the intellectual property rights of companies in a range of industries.

On the transactional side, our copyright attorneys conduct due diligence reviews and evaluate target companies’ copyright and other IP assets in connection with joint ventures, mergers and acquisitions, asset sales, and co-branding, and distribution agreements.

Our litigators are experienced in resolving copyright infringement actions for both registered and unregistered copyrights and in navigating issues of joint ownership, fair use, public domain, and independent creation.

Technology Litigation

We advise technology companies in many types of technology dispute resolution and litigation matters, including those related to IT and software, e-Commerce, e-Payments, FinTech, ad-tech, and industrial projects disputes.

Our IP & Technology team has a track record of representing clients in complex civil litigation and commercial disputes in the technology field, including across various jurisdictions. Clients include multinational corporations, foreign and local listed companies, small and medium enterprises, and foreign and local financial institutions.

Trade Secret and Unfair Competition

We represent clients in actions involving unfair trade practices, unfair competition, trade secret misappropriation and violations of non-competition and nondisclosure agreements.

 

Key Contacts

All Attorneys

Cohen & Gresser is pleased to announce that 29 of the firm's lawyers are included on the 2023 New York Metro Super Lawyers list and 11 lawyers are included on the 2023 New York Metro Rising Stars list across a range of practice areas.

Super Lawyers named C&G co­founder Mark S. Cohen one of the Top 10 lawyers in the New York metropolitan area. Partners Jonathan S. Abernethy and Karen H. Bromberg have also been named to the Super Lawyers list of the Top 100 lawyers in the New York metropolitan area. Additionally, Karen has been recognized as one of the Top 50 women lawyers within the same region.

Super Lawyers and Rising Stars are annual lists of outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Only 5 percent of the lawyers in each state are selected as Super Lawyers, and only 2.5 percent are selected as Rising Stars.

The C&G lawyers recognized on the New York Metro Super Lawyers list are:

The C&G lawyers recognized on the New York Metro Rising Stars list are:

Cohen & Gresser advised Procuritas, a mid-market private equity firm with the longest track record in the Nordics, and its portfolio company Nature Planet, in its cross-border acquisition of American company Phillips International, known under the brand name Cool Jewels. Cool Jewels is a leading sustainability-focused provider of jewelry for the attractions industry in the United States.

Nature Planet was founded with a clear focus on building strong long-term relationships with its customers in the attractions industry, particularly focused on the zoo and aquarium segment. Today the company supplies more than 5,000 customers in Europe and the United States. The acquisition of Phillips International adds jewelry as a new product category, making Nature Planet a one-stop-shop for the attractions industry.

Cohen & Gresser served as counsel to our client Procuritas and its portfolio company Nature Planet on all aspects of the transaction. The Cohen & Gresser team was led by Daniel H. Mathias and Robert Gavigan, with assistance from associates Myia Williams and James Mossetto. C&G partners Karen Bromberg (Employment and Intellectual Property), Bonnie Roe (Corporate) and Nicholas J. Kaiser (Tax) provided additional deal support. The terms of the transactions were not disclosed.

International law firm Cohen & Gresser is pleased to announce that its Paris office has once again been recognized in The Legal 500’s 2022 Europe, Middle East, and Africa (EMEA) guide for its work in five practice areas: Commercial Litigation, Employment, IT and Internet, Stock Market Litigation, and Tax. The Legal 500 recognizes practices that are “providing the most cutting edge and innovative advice to corporate counsel.” Clients recognized C&G for its “ability to synthesise, analyse and argue matters” and noted that the firm “has an extensive technical track record and is able to support French and foreign clients” on all types of issues. Two C&G lawyers received top-level rankings and have been recognized as “Leading Individuals” in their respective practice areas. The full list of C&G lawyers recognized in The Legal 500 2022 EMEA guide includes:  
Cohen & Gresser is pleased to announce that 37 of the firm's New York and Washington D.C.­based attorneys have been named to the 2021 Super Lawyers List across a wide range of practice areas. C&G co­founder Mark S Cohen and partners Jonathan S Abernethy and Daniel H Tabak have also been named to the Super Lawyers list of the top 100 lawyers in the New York metropolitan area, and partner Karen H Bromberg has been recognized as one of the top 50 women lawyers in the New York metropolitan area.

Super Lawyers ranks outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Only five percent of the lawyers in each state are selected as Super Lawyers, and only 2.5 percent are selected as Rising Stars.

Super Lawyers

Jonathan S Abernethy: Criminal Defense: White Collar

Kwaku Andoh: Mergers & Acquisitions

Elizabeth Bernhardt: Business Litigation

Thomas E Bezanson: Personal Injury – Products: Defense

Colin C Bridge: Criminal Defense: White Collar

Karen H Bromberg: Intellectual Property

Jason Brown: Criminal Defense: White Collar

Joanna K Chan: Securities Litigation

Mark S Cohen: Business Litigation

S Gale Dick: Business Litigation

Christian R Everdell: Criminal Defense: White Collar

Lawrence T Gresser: Business Litigation

Oliver S Haker: Business Litigation

Johannes Jonas: Mergers & Acquisitions

Nicholas J Kaiser: Real Estate

Jeffrey I. Lang: Business Litigation

Melissa H Maxman: Antitrust Litigation

Ellen Paltiel: General Litigation

Nathaniel P T Read: Business Litigation

Bonnie J Roe: Securities & Corporate Finance

Stephen M Sinaiko: Business Litigation

C Evan Stewart: Securities Litigation

Daniel H Tabak: Business Litigation

Scott D Thomson: Business Litigation

Alexandra Wald: Business Litigation

Ronald F Wick: Antitrust Litigation

Rising Stars

Luke Appling: Civil Litigation

Sharon L Barbour: Criminal Defense: White Collar

Drew S Dean: General Litigation

William Kalema: Business Litigation

Sri Kuehnlenz: Civil Litigation

Winnifred A Lewis: Securities Litigation

Marvin J Lowenthal: Criminal Defense: White Collar

Barbara K Luse: Criminal Defense: White Collar

Matthew V Povolny: Business Litigation

Benjamin Zhu: Criminal Defense: White Collar

IAM Patent 1000 has recognized Karen H Bromberg as a leading patent professional in its 2021 guide. Published by Intellectual Asset Management (IAM), the ranking “is commonly regarded as the definitive ‘go-to’ resource for those seeking to identify world-class, private practice patent expertise and leading expert witnesses in the US.” In determining the rankings, IAM looks at several factors, including depth of knowledge, market presence, and level of work, as well as positive peer and client feedback.

International law firm Cohen & Gresser has received high praise in Chambers USA 2021 for its “outstanding service” and dramatic international growth that “further strengthens its handling of cross-border proceedings.” Chambers commentary highlights C&G as one of the “biggest [law firm] innovators of the last forty years” and recognizes the firm’s “red-carpet treatment” for clients and “high-quality lawyers” who are “responsive, knowledgeable and service-oriented.”

Ranked Departments:

  • Litigation: General Commercial: Highly Regarded
  • White-Collar Crime & Government Investigations: The Elite

Ranked Lawyers:

Intellectual Property: Patent Litigation: General Commercial Litigation: Securities White-Collar Crime & Government Investigations

Cohen & Gresser is pleased to announce that its Paris office has once again been recognized in The Legal 500’s 2021 Europe, Middle East, and Africa (EMEA) guide for its work in six practice areas: Commercial Litigation, Compliance, Employment, IT and Internet, Stock Market Litigation, and Tax. These practices were identified as “providing the most cutting edge and innovative advice to corporate counsel.” Clients recognized C&G as “extremely agile and user-friendly” and highlighted the firm’s “professionalism” and “pragmatic approach” when handling their most complex matters.

Cohen & Gresser is pleased to announce that 35 of the firm's New York and Washington D.C.­based attorneys have been named to the 2020 Super Lawyers List across a wide range of practice areas. C&G co-­founder Mark S Cohen and partners Jonathan S Abernethy and Daniel H Tabak have also been named to the Super Lawyers list of the top 100 lawyers in the New York metropolitan area, and partner Karen H Bromberg has been recognized as one of the top 50 women lawyers in the New York metropolitan area.
IAM Patent 1000 has recognized Karen H Bromberg as a leading patent professional in its 2020 guide, highlighting Karen as an “excellent IP strategist” with a talent for “resolving complicated matters in creative and business-minded ways.”  Published by Intellectual Asset Management (IAM), the ranking identifies top patent professionals in key jurisdictions around the globe and takes into account an attorney’s depth of knowledge, market presence, level of work, as well as positive peer and client feedback.

Managing Intellectual Property has named Karen H Bromberg as a Copyright Star and as a Trademark Star in its 2020 IP Stars rankings. This recognition marks the seventh consecutive year that Karen has been listed as an IP Star – a recognition given to IP professionals who have been highly recommended by their peers and clients.

Chambers has recognized Cohen & Gresser in its 2020 USA guide for its achievements in General Commercial Litigation and White Collar Crime & Government Investigations. Chambers commentary highlights the firm's "thoroughness, quality, responsiveness, client care and availability,” noting that "the level of service is stellar, the work product is uniformly superb,” and that C&G is "a great firm with high quality across the board."

Chambers also recognized the following individuals: Jonathan S Abernethy for White Collar Crime & Government Investigations; Karen H Bromberg for Intellectual Property: Patent; Mark S Cohen for Securities Litigation and White Collar Crime & Government Investigations; and Lawrence T Gresser for Commercial Litigation.

We are pleased to announce that 33 of our New York and Washington D.C.-based C&G attorneys have been recognized by Super Lawyers this year across a wide range of practice areas. Super Lawyers also selected C&G co-founder Mark S Cohen and partners Jonathan S Abernethy and Daniel H Tabak to its list of the top 100 lawyers in the New York metropolitan area, and partner Karen H Bromberg to its list of the top 50 women lawyers in the New York metropolitan area.

Managing Intellectual Property has named Karen H Bromberg as a Patent Star and as a Trademark Star in its 2019 IP Stars rankings. IP Stars are private practice IP professionals who have been highly recommended by their peers and clients.

IAM Patent 1000 has recognized Karen H Bromberg and Francisco A Villegas as leading patent professionals in its 2019 guide, noting an “excellent track record” and efficiency in “facilitating early wins.”  Published by Intellectual Asset Management (IAM), the ranking identifies top patent professionals in key jurisdictions around the globe and takes into account an attorney’s depth of knowledge, market presence, level of work, as well as positive peer and client feedback.
We are pleased to announce that thirty of our New York and Washington, D.C.-based C&G attorneys have been recognized by Super Lawyers this year across a wide range of practice areas. Super Lawyers also selected C&G co-founders Mark S Cohen and Lawrence T Gresser to its list of the top 100 lawyers in the New York metropolitan area, and partners Karen H Bromberg and Alexandra Wald as two of its top 50 women lawyers in New York. Super Lawyers ranks outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Fewer than five percent of all lawyers in the U.S. receive this honor.

Managing Intellectual Property has named Karen H Bromberg as a Patent Star and as a Trademark Star in its 2018 IP Stars rankings. IP Stars are private practice IP professionals who have been highly recommended by their peers and clients.

IAM Patent 1000 has recognized Karen H Bromberg and Francisco A Villegas as leading patent professionals in its 2018 guide.  Published by Intellectual Asset Management (IAM), the IAM Patent 1000 identifies top patent professionals in key jurisdictions around the globe, compiling its data through interviews with numerous attorneys at law, patent attorneys, and in-house counsel.
C&G welcomes the attorneys who joined the firm in 2017. "We’re very fortunate to have added these exceptional lawyers in New York and Paris," said Managing Partner, Lawrence T Gresser.  "We look forward to continuing to build our transactional and disputes practices in all of our offices in 2018."
Twenty-eight of our New York and Washington D.C.-based Cohen & Gresser attorneys have been recognized by Super Lawyers this year across a wide range of practice areas. Super Lawyers also named C&G co-founding partner Mark S Cohen to its list of the top 100 lawyers in the New York metropolitan area, and partners Karen H Bromberg and Alexandra Wald to its top 50 women lawyers in New York list. Super Lawyers ranks outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Fewer than five percent of all lawyers in the U.S. receive this honor.
IAM Patent 1000 has recognized Karen H Bromberg and Francisco A Villegas as leading patent professionals in its 2017 guide.  Published by Intellectual Asset Management (IAM), the IAM Patent 1000 identifies top patent professionals in key jurisdictions around the globe, compiling its data through interviews with numerous attorneys at law, patent attorneys, and in-house counsel.
Managing Intellectual Property has named Karen H Bromberg a Patent Star in its 2017 IP Stars ranking. Karen was also selected as a 2017 Trademark Star. IP Stars are private practice intellectual property professionals who have been highly recommended by their peers and clients.
Twenty-two of our New York and Washington, D.C.-based attorneys have been recognized by Super Lawyers this year across a wide range of practice areas. Super Lawyers also named C&G co-founding partners Mark S Cohen and Lawrence T Gresser to its list of the top 100 lawyers in the New York metropolitan area, and partner Karen H Bromberg to both its list of top 50 women lawyers and top 100 lawyers in the New York metropolitan area.
IAM Patent 1000 has recognized Karen H Bromberg and Francisco A Villegas as leading patent professionals in its 2016 guide.  Published by Intellectual Asset Management (IAM), the IAM Patent 1000 identifies top patent professionals in key jurisdictions around the globe, compiling its data through interviews with numerous attorneys at law, patent attorneys, and in-house counsel.
We are pleased to announce that Cohen & Gresser's Paris office has been recognized in The Legal 500's 2016 France guide for its work in three separate practice areas:  Mergers and Acquisitions; Employment; and IT, Telecoms, and the Internet. The Legal 500 also noted Cohen & Gresser's growth in Paris over the course of 2015 in its overview of the French legal market. The Legal 500 analyzes the capabilities of law firms across the world.  Its rankings highlight "practice area teams who are providing the most cutting edge and innovative advice to corporate counsel."
We are pleased to announce that twenty-two of our New York-based C&G attorneys have been recognized by Super Lawyers this year across a wide range of practice areas. Super Lawyers ranks outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Fewer than five percent of all lawyers in New York receive this honor.
IAM Patent 1000 has recognized Karen H Bromberg as a leading patent professional in its 2015 guide.  Published by Intellectual Asset Management (IAM), the IAM Patent 1000 identifies top patent professionals in key jurisdictions around the globe, compiling its data through interviews with numerous attorneys at law, patent attorneys, and in-house counsel.
On Tuesday May 27, 2015, the U.S. Supreme Court ruled a good faith belief that a patent is invalid is not a defense to induced infringement. C&G's Karen H Bromberg speaks to Law360 about why this decision in Commil USA LLC v. Cisco Systems Inc. is significant.
Cohen & Gresser is pleased to announce that the firm and five of its attorneys are recognized in the 2015 edition of Chambers USA, a national ranking guide that recognizes outstanding lawyers and law firms across the United States who are strongly recommended based on in-depth interviews with thousands of lawyers, clients, and industry leaders, with the most weight assigned to client feedback. The final rankings take into account a lawyer's legal ability, professional conduct, client service, commercial astuteness, diligence, and commitment to the profession, among other qualities most valued by clients.
We are pleased to announce that twenty-four C&G attorneys have been recognized by Super Lawyers this year across a wide range of practice areas. Super Lawyers also named C&G co-founding partner Mark S Cohen to its list of the top 100 lawyers in the New York metropolitan area, and C&G partner Karen H Bromberg to its list of the top 50 women lawyers in the New York metropolitan area. Super Lawyers ranks outstanding lawyers who have attained a high degree of peer recognition and professional achievement. Fewer than five percent of all lawyers in New York receive this honor. View all rankings
A four-count indictment was recently brought by the DOJ and SEC against three individuals, including a former employee of Coinbase, for alleged insider trading of crypto assets. While the DOJ brought the criminal case under the wire fraud and conspiracy statutes, the SEC asserted its claims under the securities laws – marking the first time the SEC has alleged insider trading in violation of securities laws in the crypto context.

  • The SEC action directly raises the question whether the tokens at issue qualify as unregistered securities, with significant implications for whether the platforms that facilitate trading in those tokens are potentially exposed to legal liability as unregistered securities exchanges.
  • While Coinbase is not named in the SEC's complaint as an unregistered securities exchange, the nine tokens mentioned in the complaint were all traded on Coinbase, leaving it unclear what, if any, consequences will result from the SEC’s enforcement action for Coinbase.
  • These are also the first cases to allege “tippee” liability for insider trading in the crypto sphere -- a "tippee" being a person who receives and trades on information obtained by someone else (the "tipper") in violation of the tipper's duty to a third party.
In this client alert, Douglas Pepe, Christian Everdell, and Jesse Greenwald discuss the myriad of issues this case presents for the crypto sphere and analyze the potential implications on crypto exchange if the SEC’s action is successful.

In this bylined article for The Blockchain Law Alliance, Doug Pepe discusses a recent four-count indictment brought by the DOJ and related SEC enforcement action against three individuals, including a former employee of Coinbase, for alleged insider trading of crypto assets. These are the first cases to allege “tippee” liability for insider trading in the crypto context.

In addition, while the DOJ brought the criminal case under the wire fraud and conspiracy statutes, the SEC asserted its claims under the securities laws – marking the first time the SEC has alleged insider trading in violation of securities laws in the crypto context. The SEC action directly raises the question whether the tokens at issue qualify as unregistered securities, with significant implications for whether the platforms that facilitate trading in those tokens are potentially exposed to legal liability as unregistered securities exchanges.

Recently, President Obama signed into law the Defend Trade Secrets Act ("DTSA").  Under the DTSA, an owner of a misappropriated trade secret may bring a federal civil action if the trade secret is "related to a product or service used in, or intended for use in, interstate or foreign commerce." There are many aspects of this new law of which businesses should be aware, but three are worth special attention. Click 'view' to read more. 
Don’t assume your client will receive a stay pending post grant proceeding. Many practitioners assume that an IPR will trigger a stay of litigation.  This article discusses recent cases that suggest careful case planning, to request or resist, is necessary to best achieve a client’s goals.
E-discovery continues to be an arduous part of the patent litigation process, but three district courts in particular—The Eastern District of Texas, Northern District of California, and the District of Delaware have attempted to level the e-discovery playing field. Since different Districts use different approaches to e-discovery, it’s imperative to know the local e-discovery climate.
Some courts are holding defendants to a heightened pleading standard for affirmative defenses and counterclaims. A review of different pleading standards for claims in different jurisdictions suggests that defendants should look carefully at evolving case law in their jurisdiction in which they are sued until the Federal Circuit presumably harmonizes the pleading standards.
Partner Dan H Tabak served as a panelist in a webinar for the IPO IP Chat Channel discussing the status of conflict waivers under legal and ethical rules, the various types of advance waivers, and how courts have evaluated the text of the waiver and the surrounding facts in a number of decisions. The panelists will also offer tips for how to negotiate and draft advance waivers that can best serve the needs of both clients and law firms.
The Alice decision held that patent claims directed to certain abstract ideas are invalid under 35 U.S.C. Sec. 101. This represents the fourth time in the past five years that the Supreme Court has tackled the question of whether a patent was directed to patent-eligible subject matter. The decision impacts the future of software patents, other business method patents, and patent troll (NPE) activity. This One-Hour Briefing will address what inside counsel need to know about the Supreme Court’s decision on patent eligibility including:
  • What factors of patent eligibility does the Alice ruling not address
  • Applying Alice from the perspective of the patent defendant
A privacy law presentation at the In-House Counsel Forum of Korea.  This seminar will describe sources of privacy law in the United States and the European Union.  It will also illustrate how these jurisdictions approach privacy law, how it is enforced, and why it is enforced differently.  Lastly, recent privacy litigation in Europe and the United States will be discussed.