Charles R. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. He has successfully recovered domain names registered to others using clients’ trademarks.

Identifying vulnerabilities and considering variations on design concepts, Mr. Macedo can develop patent strategies intended to maximize patent protection and prevent infringement challenges from arising in the future. He represented clients in intellectual property litigation involving a wide range of subject matter including photomasks, angular rate sensors, methods of taking checks over the telephone, financial service products, internet websites, inventory control systems, cosmetics, nickel metal hydride batteries, cell phones, fax machines, answering machines, telephone switching equipment, inflatable chairs, money market mutual funds, designer handbags, apparel, cathode ray tube displays, projectors, DRAM, semiconductor chips, to name a few.

In the business and computer implemented invention arena, even before the State Street case was decided, Mr. Macedo (along with Mr. Lo Cicero) successfully defended the Discover Card division of Morgan, Stanley from charges of patent infringement and obtained a summary judgment of noninfringement. Mr. Macedo also acts as regular intellectual property counsel to Double Rock Corporation and its related entities. Mr. Macedo was also principal attorney on an amicus submission in In re Bilski. He is frequently consulted on developing effective patent strategies for computer implemented and business related inventions for financial service companies, Software-As-A-Service provider and clients with other internet and computer based inventions.

In the field of trademarks, Mr. Macedo has enforced and defended against trademark assertions involving a wide range of products and services including financial service providers, non-profit organizations, cosmetic companies, luxury retailers of designer handbags, and department store house brands.

He was the sole law clerk to Hon. Daniel M. Friedman of the U.S. Court of Appeals for the Federal Circuit, 1989 - 1990.

He has published papers, and lectures on various topics and has been the recipient of the prestigious AIPLA Robert C. Watson Award.

Mr. Macedo holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, both of which he graduated with honors.

Published Works

• "Amster, Rothstein & Ebenstein LLP Patent Law Alert:
  Supreme Court Grants Cert For In Re Bilski" June 1, 2009
• "Secondary Meaning Must Be Attributed To Business To Afford Trade Mark Protection Under US Law" Journal of Intellectual Property Law & Practice, May 20, 2009
• "Secondary Considerations of Non-Obviousness Must Still Be Considered" Journal of Intellectual Property Law & Practice, April 17, 2009
• "Amster, Rothstein & Ebenstein LLP Patent Law Alert
  Tafas v. Doll – Round II: One Down, Three to Go" March 24, 2009
• "Tafas v. Doll – Round II: One Down, Three to Go" IP Law360, March 24, 2009
• "Permanent Injunction Affirmed in US Patent Case" Journal of Intellectual Property Law & Practice, March 19, 2009
• "New Test for Design Patent Infringement in the USA Eliminates Separate ‘Point of Novelty’ Inquiry" Journal of Intellectual Property Law & Practice, March 12, 2009
• "Processes must be tied to machine or transform matter to be patent-eligible in the United States" Journal of Intellectual Property Law & Practice, January 27, 2009
• "Copying Of Open Source Software In Violation Of Artistic Licence Was Not Licensed" Journal of Intellectual Property Law & Practice, December 19, 2008
• "Seeking Patent Protection for Business-Related and Computer-Related Inventions After Bilski" CELESQ®-WEST IP Master Series, November 17, 2008
• "The "Machine-Or-Transformation Test" For Processes" IP Law360, October 30, 2008
• "Amster, Rothstein & Ebenstein LLP Patent Law Alert
  Bilski: The Court Announces Machine or Transformation Test as “Governing” Test" October 30, 2008
• "Duty on trade mark owner to police its own marks" Journal of Intellectual Property Law & Practice 2008
• "Egyptian Goddess v. Swisa: Revising The Test" IP Law360, September 23, 2008
• "eBay: A Tale of Two Defenses", IP Law360, August 22, 2008
• "Tiffany (NJ) Inc. v. eBay Inc.: Guidelines for Online Retailers to Police Third Party Sales of Counterfeit Goods", Common Law Journal, July 29, 2008
• "Quanta: The Supreme Court Sets the Law on Patent Exhaustion Back on Track", Common Law Journal, June 29, 2008
• "How the Federal Circuit Has Departed From the Traditional Law of Patent Exhaustion", Common Law Journal, June 29, 2008
• "The Supreme Court's Decision in Quanta", Common Law Journal, June 29, 2008
• "Issues Not Addressed in Quanta", Common Law Journal, June 29, 2008
• "High Court Sets Patent Exhaustion Law Back On Track", IP Law360, June 10, 2008
• "The Boundaries Of Patent-Eligible Processes In Bilski", IP Law360, May 09, 2008
• "In re Bilski Roll Call and Score Card", IP Law360, Financial Services Law360, Technology Law360, April 23, 2008
• "Tafas Verdict Is A Setback For Patent Office", IP Law360, April 9, 2008
• "Will The High Court Clarify The Exhaustion Doctrine?", IP Law360, January 16, 2008
• "Reviving The Exhaustion Doctrine", IP Law360, January 10, 2008
• "Patentable Subject Matter: Reining in the Boundaries", IP Law360, November 02, 2007
• "New PTO Rules on Continuing Applications and Claim examination Practice: learning to Count to 2 (+1 RCE) and 5/25", NYIPLA Bulletin, September/October, 2007
• "Infringement Assertions In The New World Order", IPLaw 360, October 17, 2007, Guest Column
• "KSR v. Teleflex, Redefining The Obvious", IP Law360, May 3, 2007, Guest Column
• "Using Intellectual Property to Protect Your Web Site", IP Law360, April 5 and May 2, 2007, Guest Column
• "Courts Write History on Permanent Injunctions In Patent Actions", IP Law360, August 21, 2006, Guest Column
• "Rethinking Claim Construction", IP Law360, April 25, 2006, Guest Column
• "Pop-Ups and 'Use of' a Protected Trademark in Light of 1-800 Contacts", Communications Lawyer, p. 28, Vol. 22, No. 2, Summer, 2005
• "Drafting Joint Research Agreements Under The Create Act Of 2004", IP Law Bulletin (now IP Law360), March 2, 2005, Guest Column
• "Effect of the Publication of Applications Under The American Inventors Protection Act of 1999", 13-4 Fed. Cir. B. J. 627, 2004
• "Determining the Underlying Facts: An Epistemological Look at Legal Opinions in Corporate Transactions", 1989 Colum. Bus. L. Rev. 353, 1989, reprinted in Regan and Bauman's Legal Ethics and Corporate Practice (West, American Casebook Series, Oct. 2005) (Chapter 15, pp. 585-595)
• "First-to-File: Is American Adoption of the International Standard in Patent Law Worth the Price?", 18 AIPLA QJ 193, 1990, 1988 Colum. Bus. L. Rev. 543, 1988, reprinted in Intellectual Property in Academe: A Legal Compendium (Nat'l Assn. of Col. and Univ. Attorneys 1991)

Speaking Engagements

• World Research Group's 6th Annual Patents & The Financial Services Industry, New York, NY, July 28-29, 2009
• Corporate IP Counsel Summit, New York, NY, April 29-30, 2009
• Celesq®-West IP Master Series: Seeking Patent Protection for Business-Related and Computer-Related Inventions after Bilski, Webinar, November 17, 2008
• Fifth Annual Patenting Your Business Methods in the Financial Services Industry Conference, July 29, 2008
• World Research Group Conference on Patenting Business Methods for Internet-Based Commerce, February 26-27,2008
• World Research Group Webinar: Business Methods: Patenting Computer and Machine Implemented Inventions Since Nuijten and Comiskey, February 14, 2008
• Celesq-West IP Master Series: Complying WIth the New PTO Rules on Continuing Applications and Claims, October 2007 (available at Celesq)
• World Research Group Webinar: New Patent Rules Update: Implications of Compliance, October 2007
• Fourth Annual Patenting Business Methods in the Financial Services Industry Conference, July 2007
• General Counsel Conference East, June 2007
• The Internet: Governance and the Law, April 2007
• Third Annual Patenting Business Methods In The Financial Services Industry, July 2006
• "Past, Present and Future of E-Commerce, Internet Distribution and Other Computer Related Issues," Oct. 2005