Management Mechanical
Resume:
KELLY A. MERKEL, ESQ., CPVA
Brooklyn, NY 11235
************@*******.***
EDUCATION: Rutgers School of Law (Camden, NJ) - Juris
Doctor 5/1996
Georgia Institute of Technology (Atlanta,
GA) -
Bachelor of Mechanical Engineering
Certificate of History, Technology and
Society 9/1992
BAR State and District Courts of New Jersey (NJ)
ADMISSIONS: United States Patent and Trademark Office (USPTO)
Court of Appeals for the Federal Circuit (CAFC)
CERTIFICATIONS: Certified Patent Valuation Analyst (CPVA)
3/2011 Project Management Professional (PMP) -
Expected Completion Date - July 2011
EXPERIENCE:
THE JOURNAL OF LEGAL TECHNOLOGY RISK MANAGEMENT 11/2005-
Present
Of Counsel, Member of Scientific Council and Contributing Author
. Counsel legal publication on issues in digital publication
. Review, approve and contribute submissions to ensure
relevance to contemporary
legal and business affairs
WOLFE, LPA (New York NY)
5/2010 - 2/2011
Associate/Director of Patents
. Manage a team of three patent attorneys on patent drafting,
client counseling
and business development for Fortune 500 clients (including
Microsoft, Procter & Gamble
and Kroger)
. Preparation and prosecution of patent applications
(including complex manufacturing
systems, control systems, internet architecture,
communications multi-networks and business methods)
. Preparation of patentability, validity, state-of-the-art and
clearance opinions
. Negotiation, drafting and review of a broad range of
transaction agreements, including
licensing, vendor and SaaS agreements
o Drafted ownership, indemnity and warranty template contract
language for
international banking business
. Prepare strategies for clients concerning acquisition,
divestiture and enforcement of
intangible assets in view of FCPA regulations and tax,
transfer pricing and stock
listing requirements
IDEAL STANDARD INTL. BVBA (Brussels, BE)/
6/2002 - 3/2010
AMERICAN STANDARD INTL. INC.(Piscataway, NJ)
Legal Counsel - Intellectual Property/Assistant General Counsel,
Intellectual Property
*American Standard Bath & Kitchen business sold to Ideal Standard
in 10/2007 for $1.9B
. IP Counsel on $1.9 billion sale of global Bath & Kitchen
business, including performance of due diligence, advising
on value of intangible assets and collaboration with M&A
counsel
. Coordination of post-closing activities after sale of Bath &
Kitchen business by American Standard
o Management of global recordation project for
securitization of intangible assets, including
post-transaction negotiation of pledge and mezzanine
agreements between Ideal Standard and lenders
o Collaborate with lenders to report recordation and
security registration issues and
maintenance of portfolio in view of pledge
obligations, country embargoes and
reporting of valuation on local stock exchanges
o Collaborate with Company Tax Director on potential tax
and ownership implications of post-transaction
transfer of intangible assets
o Management of multinational IP portfolio, including
preparation of patent and trademark applications,
patent and trademark clearance opinions, state-of-the-
art and validity opinions, opinions on the
applicability of EU Directives, management of
threatened and ongoing litigation, maintenance of
assets in view of pledge obligations, cost management
and management of international outside counsel
. Lead IP counsel on $150 million sale of Ideal Standard's
Asia-Pacific business
o Drafted and negotiated warranty, indemnification,
ownership and licensing language
directed to transfer of intangible assets under SAPA
and related agreements
o Negotiated novation of Chinese joint venture
agreements in collaboration with Hong Kong counsel for
reporting on Hong Kong exchange
o Negotiated shared services agreement with Buyer for
shared software, HR and legal services
post-closing
. Lead IP Counsel on $100+ million offer for sale of Ideal
Standard's Central/South America businesses
o Drafted and negotiated warranty, indemnification,
ownership and licensing language directed to transfer
of intangible assets under SAPA and related agreements
o Re-negotiated joint venture license agreements for
beneficial royalty extraction pre- and
post-closing
. Negotiation and drafting of intercompany and intracompany
agreements for related transactions
(including agreements for the license, sale and/or purchase of
intangible assets; NDAs; JDAs;
consultant, manufacture and supply agreements; R&D and export
distributorship agreements
involving intangible assets; and country-specific agreements with
local governments)
. Interpretation and enforcement of IP and software licensing
agreements between ISI and
American Standard, including enforcement of sole and
exclusive licenses, clean transfer
of software licenses ex-United States, clearance of security
interests on recorded assets
and compliance with defined parameters of shared IP assets
. Analysis of and counseling on IP and contractual issues in
creation of new corporate
entities and alliances
o Facilitated tax beneficial transfer of intangible
assets from German holding
company to Belgian business during formation of
new corporate entity in
Russia to take advantage of Belgium-Russia double
tax treaty
. Management of pre-litigation and litigation activities,
including contract disputes and NPE negotiations
. Preparation, prosecution and management of complex invention
disclosures for global
Bath & Kitchen business (including mechanical and electro-
mechanical sanitary devices,
manufacturing systems, control systems, ceramic and glaze
additives, fluid mechanics
and business methods) and enforcement of acquired rights
. Preparation of patentability, state-of-the-art, clearance
and validity opinions and trademark clearance opinions
. Management of global trademark and domain name portfolio,
including UDRP disputes and application of related EU
Directives in local markets (including EU privacy directives
and
liability of trademark owners in EEA markets) and counseling of
company's social media presence
. Advertising claim substantiation to prevent FTC and EPA claims
o Registered antimicrobial glaze additive under FIFRA prior
to product introduction
. Evaluation, analysis and application of relevant local
design and copyright laws on a global basis, including
investigation of counterfeiting allegations and cooperation
with local customs officials
. Education of multinational clients on relevant regional
intellectual property issues and
related commercial impact under FCPA
LADAS & PARRY (New York, NY) 1/2001 -
6/2002
Associate
. Preparation and prosecution of patent applications in the
mechanical and electro-mechanical arts on behalf of multinational
corporate clients (including consumer products, food & product
packaging, automotive technology and manufacturing devices and
methods)
. Preparation for EPO grant and opposition procedures
. Liaise with trademark departments on multidisciplinary matters
. Mentor patent attorney and patent agent in the drafting of patent
applications and client counseling
HOFFMANN & BARON (Parsippany, NJ) 3/1998
- 1/2001
Associate
. Preparation and prosecution of patent applications on behalf of
domestic and international clients (including complex medical devices,
manufacturing methods and machinery and food & product packaging)
. Preparation and prosecution of trademark applications and preparation
of trademark clearance opinions for corporate and individual clients
. Preparation of patentability, validity, state-of-the-art and clearance
opinions in the mechanical and electro-mechanical arts
. Preparation of licensing and technology escrow agreements
GLYNN & ASSOCIATES (Flemington, NJ) 2/1997 -
1/1998
Associate
. Preparation and prosecution of patent and trademark applications for
individual and corporate clients
PROFESSIONAL ACTIVITIES:
INTA (2002 to Present):
. Roundtable Presenter, "Hidden IP Issues and Costs in Corporate
Transactions"
(Annual Meeting, 5/2011)
. Member, Parallel Imports Committee (2009 to Present)
. Member, Internet Committee (2008-2009)
. Panel Member, "The Streets of San Diego - Runaway Jury" (2005
Annual Meeting)
o Addressing the issues of right of publicity and unfair
competition
NYIPLA, NJIPLA (2001 to Present)
INTERNATIONAL INTELLECTUAL PROPERTY SOCIETY (2010 to Present)
PUBLICATIONS: Interflora: Part Three of the Google AdWords
Iron Triangle,
Journal of Legal Technology Risk Management
(2011)
No Privilege for In-House Counsel Documents,
National Law Journal (2010)
A Private Practitioner's Guide to the Perils of
Dealing with In-House IP Lawyers,
Oxford Journal of Intellectual Property Law and
Practice (2010)
Portokabin, Google France and Interflora: The
ECJ AdWords Trifecta,
Journal of Legal Technology Risk Management
(2010)
How to Stump a Corporate Lawyer: Means of
Effective Legal Risk Management
for Intellectual Property Counsel, Journal of
Legal Technology Risk Management (2007)
The Competing Ethics of Patent Practitioners:
Full Disclosure to the PTO vs. Client
Confidentiality, New Jersey Law Journal (2000)
Trade Dress Can Coexist Easily with Design
Patent: Courts Stress that the Two are
Nonintersecting IP Subsets and Neither can
Outweigh the Other, National Law Journal (1999)
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