Paul Bernkopf

Of Counsel at Fogg & Powers LLC
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Contact Information
us****@****om
(386) 825-5501
Location
Greater Orlando, US

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Experience

    • United States
    • Law Practice
    • 1 - 100 Employee
    • Of Counsel
      • 2016 - Present

      Counseled clients on intellectual property strategies. Prepared infringement analyses, including claim charts, for patent assertions; advised on underlying, supporting reverse engineering. Provided non-infringement and invalidity opinions about third party patents. Secured patent rights by preparing and prosecuting patent applications pertaining to power management, communication systems, nanotechnology, semiconductor devices, optics, and software. Counseled clients on intellectual property strategies. Prepared infringement analyses, including claim charts, for patent assertions; advised on underlying, supporting reverse engineering. Provided non-infringement and invalidity opinions about third party patents. Secured patent rights by preparing and prosecuting patent applications pertaining to power management, communication systems, nanotechnology, semiconductor devices, optics, and software.

    • Japan
    • Semiconductor Manufacturing
    • 400 - 500 Employee
    • Chief Intellectual Property Counsel
      • 2000 - 2016

      Developed and implemented international patent acquisition strategies to cost effectively value and protect power management (including for electric vehicles), communications, and semiconductor inventions resulting in a 1000+ patent portfolio. Supervised external and internal professionals. Educated business managers and engineers about IP best practices.Developed international patent assertion strategies, identified assertion targets, and supervised reverse engineering and generated claim charts substantiating patent infringement.Managed domestic and foreign litigations pertaining to patent, trade secret, trademark, copyright, employment and contract disputes. Avoided significant liability defending the company and its international customers while limiting litigation costs. Opined on patent non-infringement and invalidity. Collaborated with governments in anti-counterfeiting enforcement actions.Counseled executives on IP strategies; IP enforcement, defense, and indemnity; and how to pacify international customers and investors due to lawsuits. Served as the former Chair of World Semiconductor Counsel IP Task Force and the Chair of US Semiconductor Industry Association delegation thereto; delivered presentations about IP issues to chief executive officers of large Asian, European and US semiconductor companies. Successfully negotiated scores of agreements, principally with Fortune 500 Global companies. Prepared intellectual property license and sales, product sales, e-commerce, SaaS, service, asset purchase, and litigation settlement agreements.Led legal due diligence efforts for M&A transactions including corporate investments, acquisitions, and divestitures.Generated tens of millions of dollars in royalty revenue through intellectual property assertion, licensing and sales.

Education

  • The George Washington University
    Doctor of Law (J.D.)
    -
  • University of Massachusetts, Amherst
    Master’s Degree, Electrical and Electronics Engineering (MSEE)
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  • Rensselaer Polytechnic Institute
    Bachelor’s Degree, Electrical and Electronics Engineering (BSEE)
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