|
Susan Barbieri Montgomery Partner Boston 617 832 1222 direct 617 832 7000 fax Email Susan Montgomery focuses on intellectual property assets and related strategic planning, exploitation and protection. She counsels U.S. and foreign companies on the intellectual property aspects of their domestic and international business transactions, including acquisitions, alliances and joint ventures. Susan does substantial cross-border planning for clients’ protection and exploitation of IP assets, including advising US, Canadian, European and Asia/Pacific companies on the purchase, sale and license of IP assets around the world. She also advises lenders and borrowers on IP asset collateral and financing transactions. Susan’s transactional work also encompasses software and technology development, and other domestic and international license, franchise and distribution arrangements. She counsels clients on strategies for conducting business on the Internet and use of online content. Since 1986, Susan has assisted clients with selection, registration and enforcement of rights in trademarks in over 200 jurisdictions around the world. Her work includes advising clients on advertising, packaging and trade practices compliance, and the establishment of domestic and international licensing and maintenance programs. Before joining Foley Hoag, Susan clerked for Justice J. Harold Flannery at the Superior Court of Massachusetts. Bars and Court Admissions Massachusetts U.S. District Court for the District of Massachusetts U.S. Court of Appeals, District of Columbia Circuit Representative Experience The following is a brief summary of Susan's experience and accomplishments: Advised a consumer products client on strategies for segregating, migrating and evaluating worldwide intellectual property assets in anticipation of spinning off portions of its business Testified on behalf of the ABA before the Judiciary Committee of the U.S. House of Representatives Represents foreign companies acquiring or selling assets and subsidiaries in the United States, including representation of a Belgium company purchasing the assets of a bankrupt U.S. licensee, an Australian company establishing U.S. operations with several acquisitions, and a British software company selling its U.S. business operations Represented a multinational client in its worldwide corporate reorganization and the strategic restructuring and consolidation of the client’s intellectual property holdings, and continues to advise the client on use of IP in its worldwide operations, including assignments and protective licensing of patents, trademarks and know-how in over 200 countries throughout the world professional / civic involvement Intellectual Property Law Section of the ABA, Section Chair; past service as an Officer and Council Member ALI, Principles of Software Contract Law, Advisor Suffolk University Law School, Adjunct Professor Franklin Pierce Law School Advisory Council on Intellectual Property, Member ALI-ABA Advisor on Intellectual Property to the Program Committee American Bar Foundation, Fellow Lex Mundi, Intellectual Property Practice Group, Past Chair Board of Trustees, Volunteer Lawyers for the Arts of Massachusetts, Inc., Past Member Board of Directors, International Trademark Association, Member INTA Publishing Boards, Past Chair ABA Business Law and IPL Section Joint Task Force on Security Interests in Intellectual Property, Co-Chair ABA President’s Task Force on UCITA, Member SPEECHES AND CONFERENCES Moderator, Members Forum on Business Method Patents, ABA Annual Meeting, 2007 Moderator, A Historical Perspective on How the Trademark Dilution Revision Act Came to Be and the Effect It Has Had and/or Will Have on the Courts, AIPLA Conference, 2007 Speaker, Choosing the Global Brand, INTA International Strategies Forum, 2006 Speaker, Rights and Rewards of Intellectual Property, Innovation Imperative Forum, University of Cincinnati, 2006 Speaker, Article 9 of the Uniform Commercial Code, ALI-ABA Annual Panel, 1999-2007 Speaker, International Harmonization of Trademark Registration Systems, INTA, Amsterdam, Netherlands, May 2003 Speaker, Managing Your Company’s Intellectual Property Assets, NECCA, Waltham, MA, December 4, 2002 Speaker, Drafting Internet Agreements and Licenses, INTA Annual Meeting, Washington, DC, May 21, 2002 Co-Chair, Trademarks in Business Transactions Forum, INTA, New York, New York, February 25-26, 2002 publications WORLDWIDE TRADEMARK TRANSFERS LAW & PRACTICE (Clark Boardman Callaghan/INTA) (1992-2007) Co-Edited with Richard J. Taylor “IP Bad Guys and Good Guys,” “The Voice of the ABA,” “The Certainty Imperative for Patent Law Reform,” and “Doing What is Right: Solving the Problem of Counterfeiting and Piracy” CHAIR’S COLUMN: IPL NEWSLETTER (2006-2007) Benefits of Timely Copyright Registration, INTERNATIONAL BAR ASSOCIATION COMMITTEE L NEWS (April 2003) Cc-Authored with John L. Welch and Thomas M.S. Hemnes Trademarks and Hyperlinks: Implied Rights and Express Agreements, WORLD E-COMMERCE & IP REPORT (September 2002) Intellectual Property Transfers - Holding Companies (chapter), INTELLECTUAL PROPERTY ASSETS IN MERGERS AND ACQUISITIONS (John Wiley & Sons, Inc.) (2002) Co-Authored with Leonard Schneidman Security Interests in Intellectual Property, ALI-ABA BUSINESS LAW JOURNAL (2001) Commercial Technology Transactions, ABA IPL SECTION CLE (2000) Trademarks in Business Transactions, INTA FORUM (1999) Authorship and Ownership of Copyrights, LORMAN (1999) IP Collateral: an emerging financing tool, MANAGING INTELLECTUAL PROPERTY (September 1999) Co-Authored with Carmen Eggleston Intellectual Property in the Internet Era, NECCA (1998) Off the Mark: Talking Tax in a Trademark World, TRADEMARK WORLD (May/June 1998) Co-Authored with Leonard Schneidman and Audrey Nacamuli UCC 2B Could Result in Ambiguous Intellectual Property Rights, THE NATIONAL LAW JOURNAL (May 18, 1998) Co-Authored with Robin Maisashvili Security Interests in IP and Proposed Amendments to the Copyright Act, Patent Act and Lanham Act and UCC Article 2B, ABA IPL SECTION, CLE (1997) UCC Article 2B: A Guide for the Uninitiated, SECOND ANNUAL SUFFOLK UNIVERSITY LAW SCHOOL HIGH TECHNOLOGY CONFERENCE (1997) Hot Intellectual Property Issues for Marketers: How to Use the Internet When the Law is Unsettled, INTERNET MARKETING ASSOCIATION (1996) Security Interests in Intellectual Property, ALI-ABA (2000-2007); MCLE (1995) Trademark Rights, Registration and Licensing for Artists, MCLE (1993) The Bankruptcy Code, The Copyright Act, and Transactions in Computer Software, 7 COMPUTER/LAW JOURNAL (1987) Co-Authored with Thomas M.S. Hemnes |
