Richard A. Catalina

Richard A. Catalina, Jr., Of Counsel, is an Intellectual Property, Internet and Technology attorney with more than 21 years of experience in all facets of Intellectual Property (“IP”) procurement, protection, enforcement and monetization. Richard has been selected as a Super Lawyer™ in Intellectual Property from 2005 to 2011. In 2011, he was honored to be 1 of only 5 Intellectual Property attorneys in the entire State of New Jersey to receive the Super Lawyer™ designation. In 2012, he was designated a Business Edition Super Lawyer™. His specific practice areas include Patent, Trademark, Trade Dress, Copyright, Licensing and Technology Transfer, Internet, Web 2.0 and Social Media, Trade Secret, Unfair Competition and Advertising Law. Richard is a U.S. Registered Patent Attorney with the U.S. Patent and Trademark Office (U.S. Patent Reg. No. 45,372).

Richard’s areas of expertise and key accomplishments include:

LICENSING AND TECHNOLOGY TRANSFERS : Richard has successfully negotiated, drafted and closed dozens of multi-million dollar software, trademark and high-technology IP licensing matters. Richard’s licensing philosophy is centered on maximizing value and protection for IP and technology owners through effective integration of strategies that leverage IP asset value, protection, flexibility and royalty revenue.

PATENT PROSECUTION : Richard has prosecuted dozens of U.S. patent applications in diverse technical arts, including free-space optical communications systems; sports nutrition and nutraceuticals; software and related applications; VoIP and wireless network technologies; business methods, systems and processes; diverse mechanical matters; and computer hardware and electrical devices.

Additionally, Richard’s patent practice experience and services further include:

• Patentability/Novelty Searches and Opinions
• Infringement/Non-Infringement Opinions
• Clearance/Right to Use Searches and Opinions
• Provisional Applications
• PCT (Patent Cooperation Treaty) International Applications
• Design Applications
• Invalidity Opinions
• Enforceability Opinions
• Enforcement

TRADEMARK : Richard is highly experienced in all aspects of trademark and trade dress protection, prosecution, enforcement and litigation, including inter and ex partes proceedings and appeals before the Trademark Trial and Appeal Board of the USPTO, concurrent use matters and agreements, prosecution and enforcement strategies, clearance and opinions. Richard has successfully litigated numerous matters involving claims of trademark infringement and dilution, trade dress infringement, and false advertising.

IP AND RELATED COMPLEX LITIGATION :Richard has successfully litigated dozens of multi-million dollar Intellectual Property infringement matters in Federal Courts across the U.S. involving claims of trademark infringement and dilution, trade dress infringement, design patent infringement, false advertising under the Lanham Trademark Act, unfair competition, rights of publicity and privacy, misappropriation of likeness and identity, defamation, and related claims.

INTERNET/WEB 2.0/CLOUD COMPUTING : Richard counsels clients in all aspects of Internet Law and drafts Internet legal policies and related documentation for web sites, including social media and e-commerce sites. He prepares documentation such as Terms of Use Agreements, Privacy Policies, Legal Disclaimers, DMCA Policies, Anti-SPAM Policies, Affiliate/Joint Venture Agreements, and Email Policies. He also has drafted complex interactive use protocol and legal documentation for highly sophisticated, multi-tiered Application Service platforms.

TRADE SECRET/GENERAL IP COUNSELING : Richard assists business clients in establishing company IP, trade secret, proprietary and confidential information policies, and drafts applicable legal documentation, such as employee/officer NDA/Confidentiality Agreements, Assignments, Releases and Non-Compete Agreements.

ADVERTISING : Richard advises clients regarding advertising issues and matters, including print media, Internet and television advertising, and has successfully litigated numerous Lanham Act advertising cases in federal court, including false and comparative advertising and unfair competition matters.

Prior to joining the firm, Richard was president and the managing attorney of Catalina & Associates, A Professional Corporation, a boutique Intellectual Property law firm with offices previously in Robbinsville, Princeton and Shrewsbury, New Jersey and New York, New York from 2000 until 2010.

Richard currently resides in Robbinsville, New Jersey with his wife and three children.

Areas of Practice:

Intellectual Property, Internet and Technology

Patent

Trademark / Trade Dress

Trade Secret

Copyright

Licensing and Technology Transfers

Computer Law/Software

Internet/Web 2.0/Social Media/Cloud Computing

Advertising

Intellectual Property and Complex Litigation

Unfair Competition

Blogs:

Patents by Design: When a Utility Patent is Not Available, Consider a Design Patent
What Happens on Facebook Doesn’t Always Stay on Facebook: Privacy and Social Networking

Articles:

Protecting Intellectual Property
Brave New World: The Internet & the Law
Essential Intellectual Property Strategies
New Changes to the Patent Law Every Entrepreneur Should Know
New Jersey Adopts Uniform Trade Secrets Act
Why Register a Trademark?

Bar Admissions:

New Jersey, 1989

U.S. District Court District of New Jersey, 1989

Pennsylvania, 1989

U.S. Patent and Trademark Office, 1999

Education:

Syracuse University College of Law, Syracuse, New York, 1989

Juris Doctor

Honors: Cum Laude

Honors: Dean’s List

Trenton State College (now The College of New Jersey), Ewing, New Jersey, 1983

BS: Biology and Chemistry (Double Major)

Honors: Dean’s List