DOUGLAS A. CHAIKIN | Principal
LEGAL
EXPERIENCE
Spring
1999 to Present
Adjunct Professor of Law at the University of Tulsa
1995
to Present
Principal,
Peninsula IP Group
2290 North
First Street, Suite 101
San Jose,
California 95131
Full service
Intellectual Property Law Firm featuring personalized service in each
discipline of IP law and specializing in the preparation and prosecution
of complex patent application in the electronics industry, including hardware,
firmware and software; providing comprehensive IP portfolios for a full
range of clientele, which include all of the clients listed below for
H&C and additionally the following well known clients:
· Advanced
Micro Devices- work cooperatively with in-house patent
counsel staff to develop a comprehensive patent program in various high
tech areas.
· V
Communications- work cooperatively with engineers and business development
leaders to create patent portfolio and advise client relative to litigation
and issue infringement opinions.
· Hitachi
Instruments- work cooperatively with business and technical staffs
to develop a comprehensive IP program for hardware and software; give
motivational lectures and assist patent committee as needed; develop
comprehensive patent portfolio for about to be released products.
· Guidant
& Devices for Vascular Intervention-. patent specialist for
preparation and prosecution of atherectomy and angioplasty invention
disclosures; cooperate with in-house patent counsel to create world-wide
patent portfolio.
1994
to 1995
Shareholder,
Technology Group
Hopkins
& Carley
150 Almaden
Boulevard, Suite 1500
San Jose,
California 95113-2089
Comprehensive
intellectual property practice for foreign and domestic clients, including
preparation, prosecution and litigation in all relevant areas of technology,
particularly software related matters. Representative clients include
the following:
· Devices
for Vascular - Intervention. Exclusive patent specialist for preparation
and prosecution of all invention disclosures; cooperate with in-house
patent counsel to create world-wide patent, trademark and copyright
portfolio.
·Cvlink
Corporation -Trademark consultant and attorney, advising on a variety
of technical Intellectual matters to avoid and defend litigation as
well as to create a reliable trademark portfolio.
· Senses
international Exclusive patent specialist for preparation and prosecution
of all invention disclosures. Create a portfolio of international trademarks
and give counsel in this area.
Synthesys
Research. Won appeal of all claims before Board of Patent Appeals.
The claims were rejected by Examiner and reversed on appeal. This was
the Appeal Boards first opinion construing the landmark In
re Donaldson decision on PTO procedure.
ZOOMERS.
Successful representation in patent infringement lawsuit for manufacturer
of sports related exercise equipment, resulting in judgment against
infringers. Also successful representation- of Zoomers, through the
Patent and Trademark Office on various swim training devices to form
a formidable patent portfolio.
HJS&E
Engineering, Inc. Obtained TRO and Preliminary Injunction against
copyist based upon trade dress misappropriation. Exclusive and
successful representation of HJS&E through PTO to create a patent
portfolio.
1986
to 1994 Douglas A. Chaikin, Esq.
Patent,
Trademark & Copyright Law
Private
Practice
Redwood
City, California
1987
to 1988 Patent Counsel
LSI
Logic Corporation
Milpitas,
California
Created
a company wide intellectual property portfolio. Created and directed patent
committee to oversee portfolio. Motivated employees to submit invention
disclosures, including an invention award program. Hired outside counsel
to assist in writing patent applications. Followed up with inventors and
outside counsel on methods to improve system. Initiated process of bringing
international trademark matters in-house.
1985
to 1986
Associate
Fliesler,
Dubb, Meyer & Lovejoy
San
Francisco, California
Prepared
and prosecuted patent applications; interviewed clients; drafted appeals.
Trademark prosecution and trade secret litigation representing clients
before the Trademark Trial and Appeal Board during cancellation and opposition
proceedings.
1984
to 1985
Executive
Administrator
Dolby
Laboratories Licensing Corporation
San
Francisco, California
Maintained
and improved worldwide trademark portfolio; drafted licensing agreements.
1983
to 1984 Patent and Trademark Counsel
Atari,
Incorporated
Sunnyvale,
California
Maintained
worldwide patent and trademark portfolio; drafted agreements between Atari
and licensees; established company procedure for selection and registration
of trademarks and copyrights.
1980
to 1983 Associate Counsel, Patents and Trademarks
Raychem
Corp.
Menlo
Park, California
Prepared
and prosecuted patent applications, both U.S. and foreign. Served
as division counsel for PetroTech, Telecom and Bentley-Harris; helped
to establish Raychem's worldwide trademark portfolio; brought portfolio
related work in-house; prepared agreements between Raychem and outside
vendors.
1978
to 1980 Associate
John
Cyril Malloy
Miami,
Florida
Prepared
and prosecuted patents, trademarks and copyrights on a wide range of subjects
and technology; litigated patents, trademarks and copyrights, representing
both plaintiffs and defendants; prepared and negotiated license, secrecy,
and consultant agreements.
1979
to 1980 Assistant Professor of Business Law, Miami Dade
Community
College
Miami,
Florida
LEGAL
EDUCATION
UNIVERSITY
OF TULSA, COLLEGE OF LAW
JURIS
DOCTOR DEGREE, 1978
Honors
American
jurisprudence Award for Antitrust
Activities
Law Journal
Staff; Vice Magistar, Phi Delta Phi; Athletic Chairman; Tutor, American
Indian Studies
Program for Minority Students; Legal Intern Program Participant
UNDERGRADUATE
EDUCATION
CORNELL
UNIVERSITY
BACHELOR
OF SCIENCE DEGREE, ENGINEERING, 1972
BAR
ADMISSIONS AND MEMBERSHIPS
State Bar
of California,, Intellectual Property Section; American Intellectual Property
Law Association; U.S. Patent Attorney; U.S. Court of Appeals, Federal
Circuit; U.S. District Court, Northern District California, Northern District
Texas, Southern District Florida.
PROFESSIONAL
ACTIVITIES AND PUBLICATIONS
Board of
Directors, San Mateo County Bar Association; Delegate, State Bar of California
Conference of Delegates.
Parental
Rights and Due Process, 12 Tulsa Law Journal 62 8, 1978.