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Jason Sobel

SPECIAL COUNSEL, NEW YORK



Jason Sobel counsels companies involved in a wide range of industries and technological disciplines, including financial service companies, software and internet companies, manufacturers of mechanical and electrical devices, manufacturers and suppliers of food ingredients, food products, and consumer products. His practice involves all areas of intellectual property law including advocating and counseling clients in litigation, transactional, prosecution and other strategic matters.

Mr. Sobel has litigated claims of patent, copyright and trademark infringement, misappropriation of trade secrets, breach of contract and commission of business torts from pre-filing investigations through trial and appeal in federal and state courts, and before the International Trade Commission in litigation teams including local and co-party counsel.

Mr. Sobel also structures, prepares and negotiates intellectual property, technology, service, and supply agreements in connection with standalone and large corporate transactions. He has extensive experience performing intellectual property and information technology due diligence and providing related advice in connection with corporate transactions and internal company audits of intellectual property.

Mr. Sobel also counsels clients concerning their intellectual property portfolios, and prepares and prosecutes patent, trademark and copyright applications. Additionally, he has experience developing, drafting and implementing employee intellectual property ownership and information systems policies, and advising clients concerning data privacy, open source software, computer fraud, source code and other issues related to outsourcing, computer software and information technology.

Representative Matters include:

  • Theft of trade secrets and confidential information action against former employee and new employer.
  • Copyright infringement action against internet company concerning use of a competitor’s database.
  • Enforce group of pioneering patents in federal and administrative courts and through U.S. Customs.
  • Defend patent troll litigation against multiple parties in electronics industry.
  • Defend foreign entities against trademark infringement and trade secret misappropriation claims.
  • On behalf of Purchaser, collaborate with target company to secure critical intellectual property prior to acquisition.
  • Negotiate agreements providing access to trading platforms and other services for financial services company.

Honors and Awards

  • New York City Bar Association Inaugural Jeremy G. Epstein Award for Outstanding Pro Bono Service, 2009
Activities
Speeches and Events
  • Presenter, "IP Protection for Financial Indices," August, 2007
  • Presenter, "Intellectual Property for the Micro-Entrepreneur," Biannual for the Legal Aid Society and New York City Bar Association
Publications
  • "Protecting the Confidentiality and Value of Sensitive Data and Intellectual Property," Chapter 1, Best Practices for Data Protection and Privacy, Aspatore, 2009
  • "In re Bilski: Federal Circuit Addresses Standard for Patentability of Business Methods," Stroock Special Bulletin, November 2008
  • "Enforcement Issues Raised By Geographically Descriptive Marks: The Hypothetical Case of the Fictitious Emerald Island," The Intellectual Property Strategist, June 2008
  • "Gone in a Flash: What Your Employees May Be Storing on That iPod and Its Relationship to the Computer Fraud and Abuse Act," Privacy & Data Security Law Journal, May 2008
  • "KSR International Co. v. Teleflex, Inc.: Throttling Back a Rigid Approach to Obviousness," Stroock Special Bulletin, May 9, 2007
Admitted to Practice
New York
U.S. Patent and Trademark Office; U.S. District Court, Southern District of New York; U.S. District Court, Eastern District of New York; U.S. Court of Appeals, Third Circuit
Education
J.D., Fordham University School of Law, 2003
B.S.E. , University of Pennsylvania, 2000
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