
Transactional Intellectual Property and Corporate Attorney with particular experience in licensing and trademark matters
Greater New York City Area

Transactional Intellectual Property and Corporate Attorney with particular experience in licensing and trademark matters
Greater New York City Area
My over 15 years of experience as a corporate and
intellectual property attorney includes:
- working as General Counsel of a software company
in New Jersey where I:
-- I negotiated and drafted all of their contracts,
including toolkit, enterprise, and other complex
licenses to customers around the world, and long
-term, milestone-based services agreements. The work
required frequent interaction with the company's sales
department and management; and
-- was responsible for basic corporate and employment
matters.
- Managing a private law practice where I:
-- negotiated and drafted many agreements involving
computer games (including publishing agreements,
engine licenses, shareware licenses, and agreements
providing for the exploitation of fictional characters)
during a time when the technology and related legal
issues were new;
-- filed and prosecuted many trademark applications;
and
-- led a successful royalty audit against a major game
publisher.
My background also includes:
- obtaining an LL.M. (post-JD graduate law degree)
that required study of intellectual property and
antitrust law;
- publishing Articles on copyright, trademark, and licensing
issues, including in Miller Freeman's InterActivity
Magazine;
- speaking at conferences on legal issues, including at the
Game Developers' Conference, the U. of Texas School of
Law's Computer Law Conference, and Miller Freeman's Digital
Video Conference;
- Contributing to CSC Consulting's Leading Edge
Forum paper "Open Source: Open for Business."
www.csc.com/features/2004/uploads/LEF_OPENSOURCE.pdf;
and
- Forming and representing trade associations including
STAR ("Shareware Trade Association and Resources"),
IGDN ("International Game Developers' Network") and
The ASN.1 Consortium.
Licensing, with particular experience in connection with software generally and computer games and ASN.1 in particular.
(Privately Held; Law Practice industry)
November 2009 — Present (2 months)
J S Barkats, pllc is an innovative law firm premised on offering services on a "flat fee" basis to eliminate the uncertainty and expense of traditional practices based on billable hours.
(Law Practice industry)
August 2005 — Present (4 years 5 months)
Corporate, trademark and copyright attorney, with particular experience with software licensing, and in the computer game industry.
(Computer Software industry)
January 1999 — July 2005 (6 years 7 months)
In-house counsel providing legal services at software products and services company specializing in telecommunications and biometrics.
(Legal Services industry)
1995 — 2000 (5 years )
(Partnership; 51-200 employees; Legal Services industry)
December 1983 — October 1986 (2 years 11 months)
Associate attorney in antitrust and corporate departments
1996 — 2005
LL.M. , Intellectual property law; antitrust law , 1983 — 1984
JD , Law , 1978 — 1981
B.A. , English , 1970 — 1975
* Member of the Society for Industrial Archeology, Roebling Chapter * Avid bicyclist -- Did the New York Transportation Alternatives "Century" (100+ mile rides) in 2002 and 2003 -- My bicycles include a wildly improbable souped-up 1976 Viscount. Here are pix taken by Bikecult's Dave Perry: http://bikecult.com/works/archive/04bicycles/viscountRCK.html
* Volunteer lawyer and member of the board for TheatreTweed (New York) 1987-1991 (off-off Broadway theater company)
* Volunteer lawyer for Professor Michael Hart's "Project Gutenberg" (public domain etext advocate) 1992-1994, Kroll & Tract
Published Law Review Comment, New Media Techniques, 14 J.M.Law Rev. 733 (1981).