ALBERT L. JACOBS, JR.
Intellectual Property Mediation
With more than 40 years of experience in every phase of Patent Law, Mr. Jacobs has spent the last 30 years litigating, Biotech, Pharmaceutical, Medical Device, Chemical and Business Method Patents, both before the Federal District Courts, the Court of Appeals for the Federal Circuit(CAFC) and the International Trade Commission (ITC). Mr. Jacobs presents a mediator who has rare combination of technical background, practical patent experience, and decades of actual litigation of intellectual property issues across the globe.
While working for some of New York City’s largest and most prestigious General Practice firms both national and international, including Graham & James and Greenberg Traurig, Mr. Jacobs has handled matters both nationally and globally throughout his career. He has served as the National Chair of Graham & James’s IP department and Greenberg Traurig’s International IP Department, and also served as the Local Managing Partner of Graham & James’s New York Office. He was a member of the Management team that negotiated the acquisition of the firm without the New York Office and all the New York IP attorneys by Squire Sanders & Dempsey. He was the driving force behind the acquisition of that Office of some 52 attorneys by Greenberg where he was not only Chair of the IP department but was charged with the responsibility of building a major IP Dept. from scratch which numbered 70 when he left. More than just a litigator, Mr. Jacobs has taken out Re-Issue patents and successfully sued on them. He has defended clients in patent infringement cases as well as sued infringers with success. He was the first of a group of attorneys to participate in the ITC’s first 100 Day Proceeding dealing regarding the presence or absence of Domestic Industry in the context of packaging, especially alcoholic beverages. The defendants we among the world’s largest importers and the case dealt with the package and not the goods inside.
He has successfully reversed several Markman rulings for his clients, and was among the first to appeal Business Method Patents enforcement to the CAFC. He also has regularly lectured on and advised clients on the nature and enforcement of Intellectual property rights in the People’s Republic of China as well as explaining U.S. IP enforcement to the Chinese government and to Chinese companies and law firms.
Mr. Jacobs successfully sued in one of the largest ITC cases ever filed when he brought an action against 44 companies on behalf of Dr. Gertrude Rothschild in the Semiconductor field. He has appeared before the Court of Appeals for the Federal Circuit (CAFC) from its outset, and is the only attorney ever to invalidate a Patent for his client on an appeal from a District Court’s improvidently granted Preliminary Injunction.
Mr. Jacobs in his career participated in numerous Mediations both in the Federal Courts and the ITC.
Expanding to public service, Mr. Jacobs was appointed by the Secretary of Commence to a 3 year term on the Patent Public Advisory Committee and became a Certified Mediator under New York State Statute §146. He has served as a coach for the Association of the Bar of the City of New York in their Mediation Program. He has given his time generously to many professional Organizations including the NYIPLA, International Bar Association, and the ABA among others.
Mr. Jacobs is graduate of Harvard College (1961) and Columbia Law School (1964) where he was a Stone Scholar. He is a member of the Bars of the New York, Southern, Eastern, Northern and Western District courts, the 1st Circuit, the 2nd Circuit, the D C Court of Appeals, the 7th Circuit and the 9th Circuit as well as the Supreme Court of the United States. He is also registered to practice before the U.S. Patent and trademark Office.
He is author of Patent and Trademark Forms in Four Volumes and co-authored Patent and Trademark Forms in Two Volumes and has published several articles in legal publications including. “The PTO Redefines Genomic Ingenuity”~ which appeared in the New York Law Journal and “Will The US Soon Be Out – Innovated By China” which was published by LawJ60. He was a significant contributor to WIPO’s 2007 Patent Drafting Manual. He is a frequent Lecturer and was recently the keynote speaker at The Intellectual Property Leadership Conference: Top Partners on Winning Legal Strategies & Best Practices for Success. He was the only American invited to speak at the Fourth Annual IP forum in Shanghai China and in March of 2009 was the sole lecturer on the ITC at a conference in Shanghai. China sponsored by the Shanghai in Intellectual Property Office (SIPO). He is a frequent speaker at the annual International IP Forum in Shanghai and is often interviewed for comments on recent court decisions. He has appeared on FOX and CNN’s Business Asia.
He has been designated a Super Lawyer in his field the last several years by that Publication in New York. Currently, Mr. Jacobs is semi-retired, living and working in Arizona, and available for mediations nationally.