Alan M. Sack

Experience

Alan Sack is a Registered Patent Attorney and an experienced intellectual property attorney. A graduate of MIT and the Benjamin N. Cardozo School of Law, Alan helps his clients protect their patents, copyrights, trademarks and trade secrets in disputes before district courts across the United States, the United States Patent and Trademark Office (US PTO), as well as before the United States International Trade Commission (US ITC). He has served as lead and associate counsel in numerous patent, trademark, unfair competition and copyright litigations and has also mediated intellectual property disputes.

In the realm of patent law, Alan handles patent and design patent litigation matters before U.S. district courts, and inter partes matters before the US PTO, including patent appeals, reissues, reexaminations, and post-issue review proceedings. He also counsels clients on patent preparation and infringement matters, and has extensive experience in the preparation, prosecution, and appeals of patent applications before the US PTO in a broad spectrum of technologies and designs. He is experienced in patent and copyright protection of technologies relating to computer sciences and business methods, as well as nanotechnology, biotechnology, medical devices, imaging, LED lighting, mechanical devices, energy storage, radiation detection, superconductors, computer sciences, signal processing, iontophoresis and chemical technologies, waste treatment, polymer molding and processing, chemical engineering, petroleum processing, films, fluid handling, and business methods. Alan also has successfully overseen opposition proceedings before the European and Japanese Patent Offices, and handles licensing negotiations and preparation of license agreements.

Alan is experienced in trademark, unfair competition, and trade secret litigation in the U.S. district courts, and opposition and cancellation proceedings before the US PTO. He routinely counsels clients in adoption and clearance of trademarks and service marks and the protection of trade secrets, as well as U.S. and foreign trademark filing, prosecution, opposition, and appeals. His practice also encompasses counseling and negotiation of branding and advertising transactions. He advises clients regarding protection and use of trademarks in advertising and product packaging, advertising claims, and the use of appropriate marking of patents and registered trademarks on product packaging and brochures. Alan has extensive Trademark, Copyright, Trade Secret & UC protection, Counseling, Licensing, and Litigation experience in the Apparel, Banking, Entertainment, Fabrics, Food, Footwear, Gaming, Music, & Restaurant industries. Alan has been a longtime member of the International Trademark Association (INTA) and an active member of the Trade Name Subcommittee of the Trademark Enforcement Committee of INTA. Alan has also handled a variety of copyright and entertainment related litigation, registration and counseling matters, and has litigated software and television copyright infringement actions in U.S. district courts and before the US ITC.

In a recent US ITC investigation, Alan and his team prevailed on summary determination in an investigation involving a children’s television show. The ITC’s Administrative Law Judge (ALJ) found lack of substantial similarity between the accused television show and the copyrights asserted in the investigation. Alan has also handled matters related to copyright infringement actions in the music industry and been successful in taking down infringing content for music posted on various Internet websites under the Digital Millennium Copyright Act. (DMCA). He has also successfully conducted arbitrations under ICANN’s Uniform Domain-Name Dispute-Resolution (UDRP) arbitration procedures.

Alan is a member of the Federal Bar Association and is part of a team of three senior patent litigators that has taken on an initiative to provide the district courts designated to participate in the Patent Cases Pilot Program (PCPP) with a series of in-depth and interactive multi-session presentations on the relevant substantive and procedural aspects of the Leahy-Smith America Invents Act. The sessions look at the how the new patent act affects the conduct of patent litigations before the U.S. district courts and the interplay between district court litigation and the new post-registration proceedings before the USPTO. Alan and his colleagues have presented before the judges, magistrate-judges and law clerks of the Southern District of New York, and the Eastern District of New York and have contributed to the drafting of the local patent rules that are shared by these courts.

Before SACK IP

During his career, Alan has been a partner at the law firms of Fox Rothschild, LLP and Hoffmann & Baron, LLP, as well as of counsel at Morgan & Finnegan, LLP and Locke Lord, LLP.

Alan was an Alexander Fellow at the U.S. Court of Customs and Patent Appeals and the U.S. Court of Appeals for the Federal Circuit in 1982.

Recent Speaking Engagements and Presentations

• Speaker, “How the America Invents Act and the Patent Cases Pilot Program Changed Everything! What Today’s Inventors, Investors, and Entrepreneurs Need to Know about the New Patent Acts,” MIT Club of Long Island, Melville, NY (October 15, 2015) MIT Club of Long Island Presentation

• Panelist, “Discussion on Local Patent Rules, Discrete AIA Litigation Issues, Interplay of Different Fora in which to Litigate Patent Disputes,” New York Intellectual Property Law Association: The Rapidly Changing Patent Law Landscape: What Entrepreneurs, Investors, Inventors, Lawyers and Judges Need To Know, Troy, NY (April 15, 2015)

• Lecturer, “AIA and PCPP Legislation and Impact on District Court Patent Litigation,” Before the Southern District of New York (2013)

• Lecturer, “AIA and PCPP Legislation and Impact on District Court Patent Litigation,” Before the Eastern District of New York (2013)

• Speaker, “Internet Advertising Law Green Deceptive Advertising Law,” The Essentials of Advertising & Marketing Law, Chicago, IL (September 13, 2010)

• Speaker, “2010 Advertising and Marketing Law: Emerging and Hot Topics,” New York, NY (May 13, 2010)