Amster Rothstein and Ebenstein, LLP - Intellectual Property Law
Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

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.

Mr. Macedo is the author of The Corporate Insider's Guide to U.S. Patent Practice, being published by Oxford University Press.

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 has 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
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
  • Seeking Patent Protection for Business-Related and Computer-Related Inventions after Bilski, Celesq®-West IP Master Series Webinar, November 17, 2008
  • Patent Protection for Software-Related and Business-Related Inventions in Europe and the United States, Conference, September 19, 2008
  • Fifth Annual Patenting Your Business Methods in the Financial Services Industry Conference, World Research Group, July 29, 2008 (Conference Chair)
  • on Patenting Business Methods for Internet-Based Commerce, World Research Group Conference February 26-27,2008 (Conference Chair)
  • Business Methods: Patenting Computer and Machine Implemented Inventions Since Nuijten and Comiskey, World Research Group Webinar, February 14, 2008
  • New Patent Rules Update: Implications of Compliance, World Research Group Webinar, October 2007
  • Complying With the New PTO Rules on Continuing Applications and Claims, Celesq-West IP Master Series,October 2007
  • Fourth Annual Patenting Business Methods in the Financial Services Industry Conference, World Research Group, 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, World Research Group, July 2006
  • Past, Present and Future of E-Commerce, Internet Distribution and Other Computer Related Issues, Oct. 2005
Certification/Specialties
  • Registered to practice before the U.S. Patent and Trademark Office
Bar Admissions
  • U.S. Supreme Court, 2008
  • U.S. District Court Eastern District of Michigan, 2001
  • U.S. District Court Western District of New York, 1998
  • U.S. District Court Southern District of New York, 1991
  • U.S. District Court Eastern District of New York, 1992
  • District of Columbia, 1991
  • New York, 1990
  • U.S. Court of Appeals Federal Circuit, 1990
Education
  • Columbia Law School, New York, New York, 1989. J.D.
    Honors: Harlan Fiske Stone Scholar, Columbia Business Law Review, Managing Editor, 1988 - 1989.
  • The Catholic University of America, Washington, D.C., 1986, B.S./M.S. Physics.
    Honors: Summa Cum Laude, Phi Beta Kappa, Phi Eta Sigma.
Professional Associations & Memberships
  • American Intellectual Property Law Association, Member
  • American Intellectual Property Law Association Quarterly Journal Editorial Board, Member
  • American Bar Association, Member, Intellectual Property Law Section
  • Federal Circuit Bar Association, Member
  • Financial Service Industry Intellectual Property Association, Member
  • New York State Bar Association, Member, Intellectual Property Law Section
  • New York Intellectual Property Law Association, Member
  • The Association of the Bar of the City of New York, Member
Professional Experience
  • Friedman, Wang & Bleiberg, P.C., Associate, 1991-1996
  • Cravath, Swaine & Moore, Associate, 1990-1991
  • Hon. Daniel M. Friedman, U.S. Court of Appeals for the Federal Circuit, Law Clerk, 1989-1990
Awards & Honors
  • Robert Watson Award (AIPLA), 1990
  • Recipient, Clyde Cowan Award (Physics), 1986
Amicus Briefs
Representative Clients
  • Panasonic
  • Photronics, Inc.
  • Double Rock Corp.
  • Island IP
  • Intrasweep
  • LIDS Capital
  • The Education Resources Institute (TERI)

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