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, published by Oxford University Press and is frequently published by the Journal of Intellectual Property Law and Practice, IP Law 360, and other publications. Mr. Macedo has been cited as an authority on intellectual property issues by various news media including the Wall Street Journal, Dow Jones, BNA, Bloomberg, Inside Counsel, Managing Intellectual Property, Technology Transfer Tactics.

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 and other types of matters 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, wind mills, nuclear waste disposal, green house gasses reclamation, cell phones, fax machines, answering machines, telephone switching equipment, inflatable chairs, money market mutual funds, deposit sweep programs, designer handbags, apparel, cathode ray tube displays, projectors, DRAM, semiconductor chips, to name a few.

In the internet, computer and business related invention arena, even before the State Street case was decided, Mr. Macedo 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 principal attorney on amicus submissions in Bilski v. Doll to the U.S. Supreme Court and In re Bilski to the U.S. Court of Appeals to the Federal Circuit. He is frequently consulted on developing effective patent strategies for computer implemented and business related inventions for financial service companies, Software-As-A-Service providers 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.
 


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Certification/Specialties
  • Registered to practice before the U.S. Patent and Trademark Office
Bar Admissions
  • New York, 1990
  • U.S. Court of Appeals Federal Circuit, 1990
  • District of Columbia, 1991
  • U.S. District Court Southern District of New York, 1991
  • U.S. District Court Eastern District of New York, 1992
  • U.S. District Court Western District of New York, 1998
  • U.S. District Court Eastern District of Michigan, 2001
  • U.S. Supreme Court, 2008
  • U.S. District Court Eastern District of Wisconsin, 2011
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
  • New York — Metro 2011 Intellectual Property Super Lawyer, 2011
  • Robert Watson Award (AIPLA), 1990
  • Recipient, Clyde Cowan Award (Physics), 1986
Representative Clients
  • Double Rock Corp.
  • Intrasweep
  • IslandIP
  • LIDs Capital
  • Panasonic
  • Photronics
  • The Education Resources Institute (TERI)

Amicus Briefs

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