The Law Office of Eric Zyla

What is Intellectual Property Strategy?

• Leveraging your inventiveness to drive your business growth.
• Driving future innovation with your IP assets.
• Out-maneuvering the competition by going on the offense with your IP.
• Defending against the competition by securing IP rights in focused areas.
• Collaborating safely with business partners.
• And more....

What we can do for you?

• Establish a patent program.
• Identify and prioritize patentable inventions.
• Generate intellectual property disclosure and licensing policies.
• Negotiate and draft intellectual property licensing agreements, including patent cross licenses.
• Draft intellectual property representations and warranties.
• Review intellectual property issues arising during merger transactions.
• Respond to patent infringement assertions.
• Interact with standard-setting organizations.
• Manage patent litigation.
• And implement other courses of actions custom designed for your company.

We can provide expertise to streamline internal patenting processes, manage the acquisition of intellectual property, and align future growth with an offensive and/or defensive patent strategy.

Experience

• Admitted to practice law in New York, California, Connecticut, and Federal Circuit.
• Registered Attorney with US Patent & Trademark Office.
• 15+ legal years experience.
• All aspects of Intellectual Property law covered: patent litigation, prosecution, licensing and business strategy. Also copyright and trademark law.
• Technology-based and IP litigation, corporate transactions, and issue management. International law.
• Advising multinational firms on intellectual property strategy, conducting due diligence, and working with inventors and firms to identify and protect IP.
• Excellent research and writing abilities. Outstanding presentation, communication, and advocacy skills.
• Former Systems Analysis engineer with expertise in analyzing and optimizing engineering designs.

Education

• JD from top-20 law school (half-tuition academic scholarship).
• MBA with honors from the top-ranked US international business program (full academic scholarship).
• BE in electrical engineering (physics minor) with honors from notable NYC college (full academic scholarship).

Other

• Business German Conversant. International experience.
• Former Arbitrator for Los Angeles Superior Court, local New York State judicial candidate, and community outreach volunteer.
• Author of books on various legal issues and political business risk analysis.

Representative Client Activity

Created and implemented offensive and defensive intellectual property strategies for a major American computer maker.

Negotiated and drafted all American technology agreements and licenses for Canadian aerospace engineering/software firm.

Pursued potential IP licensing opportunities, including agreement formation, for Germany-based facial pattern recognition software developer.

Advised foreign law firms requiring expertise on US IP law and US patent prosecutors on litigation.

Created development and hosting agreements for web design firm.

Provided pre-litigation management for American pharmaceutical firm for impending patent dispute.

Counseled German pharmaceutical firm on mitigating patent litigation risk.

Arbitrated a licensing dispute between two internet companies.

Conducted IP due diligence for acquisition of IT firm by another.

Supervised patent application drafting for financial derivatives method patents for Japanese investment bank.

Drafted technology transfer, know-how, and data-sharing agreements for various clients.