April Mayo Capati
IP Strategist | Patent & Trademark Procurement | IP Asset Management | Clearance Opinions | Litigation
- Role
- Intellectual Property Attorney (Patents, Trademarks, Trade Dress, Copyrights) at Lerner David
- Location
- New York, NY, US
- LinkedIn followers
- 500 followers
About April Mayo Capati
I am an IP attorney and strategist with 10+ years of experience advising companies in all…
Experience
Intellectual Property Attorney (Patents, Trademarks, Trade Dress, Copyrights)
Sep 2001 — Present · Westfield, NJ, US
A partner at the largest intellectual property (“IP”) boutique law firm in NJ, I counsel clients in all aspects of IP law - patents, trademarks, trade dress, trade secret, and copyrights. I provide strategic counsel to clients regarding complex IP issues that result in proven business solutions and outcomes. PATENT COUNSELING & RISK MANAGEMENT • Devise innovative IP strategies that align with the business objectives of diverse corporate clients ranging from startup to Fortune 200.• Collaborate with in-house counsel and C-suite executives to effectively manage global patent portfolios, including developing IP assets that accommodate an evolving competitive landscape. • Prepare and prosecute design and utility patent applications across a diverse range of technologies, including mechanical, electromechanical, and software. • Lead invention harvesting sessions and collaborate with in-house engineering teams to identify patentable features and strategize optimal claim scope.• Provide opinions regarding invalidity, non-infringement, patentability, right to use, and freedom to operate.TRADEMARKS AND COPYRIGHTS • Analyze client and third-party products and marketing campaigns for potential trademark, trade dress, and copyright infringement issues.• Prepare, file, and prosecute trademark applications, manage portfolios, and provide opinions on adaptation of marks, scope of third-party marks, and third-party infringement of clients\' trademarks.• Prepare and file copyright applications and provide counsel regarding copyright infringement.AGREEMENTS • Prepare, evaluate, and negotiate diverse transactional instruments, such as licenses, assignments, privacy agreements, non-disclosure agreements, confidentiality agreements, and consulting agreements.IP ENFORCEMENT AND DEFENSE• Experience handling all aspects of patent and trademark litigation from pre-suit investigation through trial and appellate briefing.• Prepare and respond to cease and desist letters.
Education
The George Washington University
BS
University of Maryland School of Law
J.D.
Skills
- Patents
- Trade Secrets
- Patent Prosecution
- Prosecution
- Right to Use and Freedom to Operate Studies and Opinions
- Patent Litigation
- Trademarks
- Intellectual Property
- Copyright Law
- Legal Research
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