Nels Lippert is a counsel in the Intellectual Property Practice with more than 40 years of experience on a broad range of intellectual property counseling and litigation matters at some of the leading U.S. law firms.
A registered U.S. patent attorney, Nels has particular experience in trials, interferences, counseling, licensing and prosecution of chemical, biotechnological, pharmaceutical and systems patents. He also administers trademarks and registrations globally for leading U.S. and international consumer product manufacturers, software and systems, and service companies.
Nels’ career highlights include successfully representing the Japanese Foundation for Cancer Research and other Japanese interests against Biogen, Inc., and Yeda Research and Development Co. Ltd. in a lengthy and highly publicized US patent interference proceeding involving the patent rights to the DNA sequence coding for Interferon-beta. The Federal Circuit affirmed the application of the simultaneous conception and reduction to practice concept to genetic material. Fiers v. Revel, et al. v. Sugano, et al., 984 F2d 1164 (Fed. Cir. 1993).
Nels recently successfully represented the Japanese Foundation for Cancer Research in an interference against Biogen MA, Inc. followed by a district court action and affirmation by the Court of Appeals for the Federal Circuit which, among other favorable rulings, ruled that the America Invents Act eliminated district court reviews of patent interferences declared after September 15, 2012. He was lead counsel for the Japanese Foundation in this and prior patent interferences.
Other representative matters include:
Prior to joining Tarter Krinsky & Drogin, Nels was a partner at a leading U.S. firm, where he opened the New York office and served as Vice Chair of the Intellectual Property Group.
What I do when not practicing law:
Long rides on a road bike
Favorite vacation spot:
Intellectual Property counsel Nels Lippert has been reappointed for a two-year term on the International Trade Association’s Trademark Reporter Committee.
This year, 28 lawyers from Tarter Krinsky & Drogin have been named to the 2017 New York Super Lawyers and Rising Stars lists as top lawyers in the state. The annual Super Lawyers list recognizes the top five percent of lawyers in New York for their professional achievements. Attorneys are selected through a process that includes independent research, peer nominations and peer evaluations.
Four Tarter Krinsky & Drogin attorneys were ranked on the Rising Stars list, which recognizes the top 2.5 percent of lawyers who either are under the age of 40 or have been in practice for 10 years or less.
New York Metro Super Lawyers has named 21 Tarter Krinsky & Drogin lawyers in 10 practices to its 2016 list.
The 2015 New York Super Lawyers recognized 22 of Tarter Krinsky & Drogin’s attorneys.
The firm successfully represented the Japanese Foundation for Cancer Research in a patent interference against Biogen MA, Inc. followed by transfer of a district court appeal and affirmance by the Court of Appeals for the Federal Circuit.
Tarter Krinsky & Drogin LLP is pleased to welcome Nels T. Lippert as a Counsel in the Intellectual Property Group. With a focus on trademark and patent counseling and litigation, he administers trademarks and registrations globally for leading consumer product manufacturers, pharmaceutical companies and service companies.
On March 12, Intellectual Property counsel Nels Lippert moderated the “Bridging the Gap: Company Expectations vs. IP Realities” panel at BPIP’s 6th Annual Conference in Tel Aviv. Nels’ panel addressed the various options in the division of labor between intellectual property managers, outsourced counsel and company personnel.
Nels Lippert will present at the 4th annual Best Practices in Intellectual Property Conference.
With the goal of fostering public commentary, the new domain name .SUCKS was approved by ICANN. Despite objections from some in the IP community, the sunrise period for .SUCKS is now open; it runs until May 29th.
Design patents continue to grow in importance for many industries. If your company designs tangible products or packages, there is a new, efficient way to seek international protection for design features.
The patent landscape has changed regarding business method patents.
In the summer of 2014, the Supreme Court issued a decision in Alice Corp. v. CLS Bank which invalidated certain business method patents related to finance. The basis for the invalidation was that the patents covered an abstract idea not eligible for patent protection.
Many agreements include an indemnification clause typically using language like this: “Party A will defend, indemnify and hold harmless all claims, losses and damages against Party B related to its use of the Technology.”
In Non-Disclosure Agreements, there is often boilerplate language that includes trade secrets in the definition of “Confidential Information.” This seemingly innocuous language can lead to problems for the owner of the trade secrets.
Be wary of giving up your rights for "lost profits." In most jurisdictions, there are two types of "lost profits": (1) those arising from general damages (recovery of money that a party agreed to pay under a contract); and (2) those arising from consequential damages (recovery of money lost based on other business arrangements). The first is generally easier to prove, but often a party in breach can be reasonably expected to pay the second.
Clearly define the grant provisions of all of your IP contracts. If you want to transfer or receive "intellectual property" or "technology," ensure that these terms are well defined and unambiguous. Definitions matter! By making the contract terms clear, you can potentially reduce (or eliminate entirely) future litigation costs.