Resumes of Professional Staff
Peter A. Luccarelli Jr.

 

2008 – present – Of Counsel

Michaelson & Associates

Shrewsbury, New Jersey

Leader of firm’s mechanical and electromechanical practice: functioning as "virtual in-house counsel" for research & development and manufacturing companies.  Practice specialties:

·       Identification of inventions as new business assets.

·       Novelty search evaluations.

·       Patent drafting and prosecution: USA and corresponding foreign
applications.

·       Drafting opinions of counsel relating to infringement, invalidity, and patentability.

·       Acquisition and divestiture negotiation and due diligence.

·       Risk management product clearances and claims management.

·       Patent and trademark licensing.

·       Litigation and alternative dispute resolution support.

 

1990-2008
2000-2008 - Associate Chief Intellectual Property Counsel
1995-2000 - Senior Intellectual Property Counsel
1990-1995 - Intellectual Property Counsel
Siemens Corporation
Iselin, New Jersey

Leader of eight IP attorney law group in three offices, rendering all patent, trademark and copyright services for the Siemens AG Industry Group and NAFTA subsidiaries.  Practice group responsibility during career:

·        Industrial automation, drive systems, controls and software.

·        Building automation.

·        Automotive systems.

·        Power generation and distribution.

·        Water treatment. 

·        Industrial services.

·        Metals and mining.

 

Functional responsibilities:

·       Identification of inventions as new corporate assets, including patent policy promulgation, adoption and implementation.

·       Patent drafting and prosecution in the mechanical, electro-mechanical, electronics and software arts.

·       Drafting opinions of counsel relating to infringement, invalidity and patentability.

·       Acquisition and divestiture negotiation and due diligence.

·       Risk management: product clearances and claims defense.

·       Patent and trademark licensing (in/out) and enforcement (offensive/defensive).

·       Developed and implemented IP management strategies to support Siemens US Operating Company growth from US$3.5 billion to US$32+ billion business over 18 years.

·       Annual strategic planning and development of intellectual property portfolios.

·       Active litigation management.

·       Transnational IP projects with Siemens operations in Germany , Canada , Mexico , Austria , France , Italy , Switzerland , UK , Australia , China , India , Japan and Korea .

 

1985-1990 – Associate
Cooper & Dunham
New York , New York

·        Extensive representation of   manufacturers and non-profit research institutions in medical device, medical imaging, interactive digital video and industrial process control technology fields: patent preparation and prosecution, litigation, opinions of counsel, licensing and M&A due diligence.

 

1982-1985 – Associate
Wender, Murase & White
Washington, DC

·        Representation of manufacturers in industrial equipment, electronics and medical device technology fields: patent preparation and prosecution, litigation, opinions of counsel, licensing and M&A due diligence.  Coordination with Corporate and Litigation Departments in cross-functional teams. 

 

1981-1982 – Associate
Pennie & Edmonds
New York , New York

·        Representation of manufacturing companies in industrial equipment, video game, electronics, automotive and medical device technology fields: patent preparation and prosecution, litigation, opinions of counsel and licensing.

 

 

Fordham University School of Law

1981 - JD        

 

Columbia University School of Engineering and Applied Science

1978 - BS

·        Major: Mechanical Engineering. Presently member of External Advisory Board, Department of Mechanical Engineering.

New Jersey

New York

Washington DC (now inactive status)

U.S. Patent and Trademark Office

U.S. Court of Appeals for the Federal Circuit

U.S. District Courts (D.N.J., S.D.N.Y., E.D.N.Y. and D.D.C.)

U.S. Court of Federal Claims

"The Supremacy of Federal Copyright Law Over State Trade Secret Law for Copyrightable Computer Programs Marked With a Copyright Notice", III Computer/Law Journal 19 (1981). (click here to view)

·        Member, External Advisory Board for the Department of Mechanical Engineering, Columbia University Fu Foundation School of Engineering and Applied Sciences.

·        Member, School Advisory Council for Sacred Heart School (K-8), South Amboy, New Jersey.

Siemens Corporation

VentralFix, Inc.

Representative patents: (click here to view)

Client references will gladly be furnished upon request.