Nels Lippert is a partner in the Intellectual Property practice with more than 40 years of experience on a broad range of intellectual property counseling and litigation at some of the leading U.S. law firms.
Nels administers trademarks globally for leading U.S. and international consumer product manufacturers, software and systems providers and service companies. He regularly represents clients’ trademark interests in the Federal Courts and before the Trademark Trial and Appeal Board.
A registered U.S. patent attorney, Nels also has particular experience in trials, interferences, counseling and licensing of chemical, biotechnological, pharmaceutical and systems patents.
Nels’ career highlights include successfully representing the Japanese Foundation for Cancer Research and other Japanese interests against Biogen, Inc., and Yeda Research and Development Co. Ltd. in a lengthy and highly publicized U.S. patent interference proceeding involving the patent rights to the DNA sequence coding for Interferon-beta. The Federal Circuit affirmed the application of the simultaneous conception and reduction to practice concept to genetic material. Fiers v. Revel, et al. v. Sugano, et al., 984 F2d 1164 (Fed. Cir. 1993).
Nels recently successfully represented the Japanese Foundation for Cancer Research in an interference against Biogen MA, Inc. followed by a district court action and affirmation by the Court of Appeals for the Federal Circuit which, among other favorable rulings, ruled that the America Invents Act eliminated district court reviews of patent interferences declared after September 15, 2012. He was lead counsel for the Japanese Foundation in this and prior patent interferences.
Other representative matters include:
Prior to joining Tarter Krinsky & Drogin, Nels was a partner at a leading U.S. firm where he opened the New York office and served as Vice Chair of the Intellectual Property Group.
What I do when not practicing law:
Long rides on a road bike
Favorite vacation spot:
EcoHealth Alliance is a global environmental health nonprofit based in New York City dedicated to protecting wildlife and public health from the emergence of pandemic diseases. Its unique "One Health” approach uses a multidisciplinary method to solve health challenges caused by environmental changes and human-animal interactions. Members of our team have served as EcoHealth Alliance's pro bono counsel for the past four years and continues to assist the nonprofit on an array of matters. Our full-service practice enables us to offer EcoHealth Alliance the ability to tap into the expertise of our lawyers on a wide range of legal matters when they need it, from trademark filing and intellectual property issues, to other complex business matters.
Thirty-two lawyers from Tarter Krinsky & Drogin have been named to the 2019 New York Super Lawyers and Rising Stars lists, a rise in Tarter Krinsky & Drogin attorneys awarded as top lawyers in New York. The annual Super Lawyers list recognizes the top five percent of lawyers in New York for their professional achievements. Lawyers are selected through a process that includes independent research, peer nominations and peer evaluations.
Thirty lawyers from Tarter Krinsky & Drogin have been named to the 2018 New York Super Lawyers and Rising Stars lists as top lawyers in New York. The annual Super Lawyers list recognizes the top five percent of lawyers in New York for their professional achievements. Lawyers are selected through a process that includes independent research, peer nominations
Tarter Krinsky & Drogin once again partnered with Università Bocconi to host a program at our offices in New York City for 16 Bocconi law students as part of its In-Company Training Program. The Bocconi In-Company Training Program is a global academic program that provides its students the opportunity to learn more about select companies in the United States.
Intellectual Property counsel Nels Lippert has been reappointed for a two-year term on the International Trade Association’s Trademark Reporter Committee.
This year, 28 lawyers from Tarter Krinsky & Drogin have been named to the 2017 New York Super Lawyers and Rising Stars lists as top lawyers in the state. The annual Super Lawyers list recognizes the top five percent of lawyers in New York for their professional achievements. Attorneys are selected through a process that includes independent research, peer nominations and peer evaluations.
Four Tarter Krinsky & Drogin attorneys were ranked on the Rising Stars list, which recognizes the top 2.5 percent of lawyers who either are under the age of 40 or have been in practice for 10 years or less.
New York Metro Super Lawyers has named 21 Tarter Krinsky & Drogin lawyers in 10 practices to its 2016 list.
The 2015 New York Super Lawyers recognized 22 of Tarter Krinsky & Drogin’s attorneys.
The firm successfully represented the Japanese Foundation for Cancer Research in a patent interference against Biogen MA, Inc. followed by transfer of a district court appeal and affirmance by the Court of Appeals for the Federal Circuit.
Tarter Krinsky & Drogin LLP is pleased to welcome Nels T. Lippert as a Counsel in the Intellectual Property Group. With a focus on trademark and patent counseling and litigation, he administers trademarks and registrations globally for leading consumer product manufacturers, pharmaceutical companies and service companies.
On June 24, 2020, Intellectual Property Co-Chair Amy B. Goldsmith and Partner Nels Lippert will be moderating Lawline’s State of the IP Practice Area Zoom Round Table. The program will delve into how COVID-19 has impacted the Intellectual Property landscape, including what trends and issues practitioners are experiencing during this time.
On October 21, Intellectual Property partner Nels Lippert will attend the World Intellectual Property Organization (WIPO) 20th anniversary of the Uniform Domain Name Dispute Resolution Policy (UDRP) Conference at its headquarters in Geneva, Switzerland. Nels is one of more than 140 UDRP panelists.
On April 29, International and Retail chair Giuliano Iannaccone and associate Federica Rigato once again hosted a group of students from Bocconi University, a private university in Milan, Italy, at our office in New York City to learn more about legal opportunities in the United States.
On March 6, Intellectual Property partner Nels Lippert will present, “Intellectual Property Indemnification Issues” at Amdocs’ monthly meeting. Nels has presented to Amdocs’ legal group several times, both domestically and internationally. Amdocs is a leading software and services provider to communications and media companies of all sizes.
On March 12, Intellectual Property counsel Nels Lippert moderated the “Bridging the Gap: Company Expectations vs. IP Realities” panel at BPIP’s 6th Annual Conference in Tel Aviv. Nels’ panel addressed the various options in the division of labor between intellectual property managers, outsourced counsel and company personnel.
Nels Lippert will present at the 4th annual Best Practices in Intellectual Property Conference.
On April 23, 2020, the U.S. Supreme Court issued its long-awaited decision on whether "willful" infringement was a prerequisite to an award of the infringer's profits as damages. In Romag Fasteners, Inc. v. Fossil Group, Inc., Case No. 18-1233, the Court held that a "plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff's trademark as a precondition to a profits award" and, thus, brought to an end the division of the courts of appeals on this topic.
In the past calendar year, we saw several significant decisions from the Supreme Court pertaining to trademarks.
With the goal of fostering public commentary, the new domain name .SUCKS was approved by ICANN. Despite objections from some in the IP community, the sunrise period for .SUCKS is now open; it runs until May 29th.
Design patents continue to grow in importance for many industries. If your company designs tangible products or packages, there is a new, efficient way to seek international protection for design features.
The patent landscape has changed regarding business method patents.
In the summer of 2014, the Supreme Court issued a decision in Alice Corp. v. CLS Bank which invalidated certain business method patents related to finance. The basis for the invalidation was that the patents covered an abstract idea not eligible for patent protection.
Many agreements include an indemnification clause typically using language like this: “Party A will defend, indemnify and hold harmless all claims, losses and damages against Party B related to its use of the Technology.”
In Non-Disclosure Agreements, there is often boilerplate language that includes trade secrets in the definition of “Confidential Information.” This seemingly innocuous language can lead to problems for the owner of the trade secrets.
Be wary of giving up your rights for "lost profits." In most jurisdictions, there are two types of "lost profits": (1) those arising from general damages (recovery of money that a party agreed to pay under a contract); and (2) those arising from consequential damages (recovery of money lost based on other business arrangements). The first is generally easier to prove, but often a party in breach can be reasonably expected to pay the second.
Clearly define the grant provisions of all of your IP contracts. If you want to transfer or receive "intellectual property" or "technology," ensure that these terms are well defined and unambiguous. Definitions matter! By making the contract terms clear, you can potentially reduce (or eliminate entirely) future litigation costs.