Nels T. Lippert

Counsel

P 212.216.1157   F 212.216.8001

 
P 212.216.1157   F 212.216.8001   nlippert@tarterkrinsky.com

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 at some of the leading U.S. law firms.

Nels administers trademarks globally for leading U.S. and international consumer product manufacturers, software and systems providers and service companies. He regularly represents clients’ trademark interests in the Federal Courts and before the Trademark Trial and Appeal Board.

A registered U.S. patent attorney, Nels also has particular experience in trials, interferences, counseling and licensing of chemical, biotechnological, pharmaceutical and systems patents.
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 U.S. 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:

  • Successfully defended an Italian wine producer in a trademark infringement action brought by a U.S. distributor of the same name. The Federal registration of the client’s name was recovered and all claims of infringement dismissed.
  • Successfully represented the Japanese Foundation for Cancer Research against Genentech Inc. in another lengthy U.S. patent interference involving the recombinant mature Interferon-beta polypeptide. Sugano et al v. Goeddel et al., Patent Interferences No. 105,334 and No. 105,337 (15 November 2012).
  • Obtained dismissal of a trademark infringement and right of publicity action brought by the heirs of a famous actor against an Italian clothing manufacturer.
  • Obtained a TRO, preliminary injunction and order on summary judgment of trademark infringement, trademark dilution, unfair competition, false advertising and deceptive trade practices in the United States District Court for the Eastern District of New York against a company selling a purported natural alternative to a renowned pharmaceutical.
  • Successfully defended a provider of “pop-up” advertisements in the United States District Court for the Eastern District of Virginia. The Court held that the pop-up ads were not “use in commerce” of the plaintiff’s trademarks and did not interfere with a copyright owner’s right to display its works or create a derivative work.
  • Obtained favorable judgments and injunctions in numerous federal actions against Internet providers of products purported to be generic versions of a well-known pharmaceutical product. In a number of instances, the cases were brought against “Doe” defendants who were successfully identified following orders of the court granting early discovery.

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.

Education
  • Bethany College, B.S., 1965
  • Case Western Reserve University School of Law, J.D., 1968
Admissions
  • New York
  • United States Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Second Circuit
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. Court of Appeals, Tenth Circuit
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Western District of New York
  • U.S. Patent and Trademark Office
Awards and Honors
  • New York Super Lawyers, Intellectual Property, Intellectual Property Litigation, 2006-2018
Memberships
  • American Bar Association (Intellectual Property Section)
  • International Trademark Association
  • WIPO Domain Name Panel of Neutrals
Speaking Engagements
  • Throughout his career, Nels has been involved in academia and continuing education, speaking on patent law at numerous bar association and Practicing Law Institute programs. He has been an adjunct professor of patent law at Benjamin N. Cardozo School of Law in New York. He was also a speaker and moderator on intellectual property law at IPResources, Best Practices in Intellectual Property programs (2016 and 2017).

What I do when not practicing law:
Long rides on a road bike

Favorite vacation spot:
Capri, Italy

  • EcoHealth Alliance

    EcoHealth Alliance is a global environmental health nonprofit based in New York City dedicated to protecting wildlife and public health from the emergence of pandemic diseases. Its unique "One Health” approach uses a multidisciplinary method to solve health challenges caused by environmental changes and human-animal interactions. Members of our team have served as EcoHealth Alliance's pro bono counsel for the past four years and continues to assist the nonprofit on an array of matters. Our full-service practice enables us to offer EcoHealth Alliance the ability to tap into the expertise of our lawyers on a wide range of legal matters when they need it, from trademark filing and intellectual property issues, to other complex business matters.

News

Events

  • Legal Alert: .SUCKS is Here: Can Your Brand Be Protected?

    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.

  • Legal Alert: A New System For International Design Protection

    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.

  • Legal Alert: Alice Corp. v. CLS Bank's Effect on Business Method Patents

    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.

  • Beware of the Boilerplate Series: "Defend, Indemnify and Hold Harmless"

    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.”

  • Beware of the Boilerplate Series: Defining Confidential Information

    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.

  • Beware of the Boilerplate Series: Limitation of Liability

    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.

  • Beware the Boilerplate Series: Always Define the Meaning of "Intellectual Property"

    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.

Education
  • Bethany College, B.S., 1965
  • Case Western Reserve University School of Law, J.D., 1968
Admissions
  • New York
  • United States Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Second Circuit
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. Court of Appeals, Tenth Circuit
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Western District of New York
  • U.S. Patent and Trademark Office
Awards and Honors
  • New York Super Lawyers, Intellectual Property, Intellectual Property Litigation, 2006-2018
Memberships
  • American Bar Association (Intellectual Property Section)
  • International Trademark Association
  • WIPO Domain Name Panel of Neutrals
Speaking Engagements
  • Throughout his career, Nels has been involved in academia and continuing education, speaking on patent law at numerous bar association and Practicing Law Institute programs. He has been an adjunct professor of patent law at Benjamin N. Cardozo School of Law in New York. He was also a speaker and moderator on intellectual property law at IPResources, Best Practices in Intellectual Property programs (2016 and 2017).

Nels Lippert

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