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Carlo Cotrone

Chief IP Counsel

Techtronic Industries (TTI)

Carlo Cotrone is Chief IP Counsel at Techtronic Industries North America (TTI), a world leader in cordless technology spanning power tools, outdoor power equipment, and floor care appliances. He also is Adjunct Professor of Law at University of Houston Law Center, and a frequent speaker and author on topics such as IP strategy and asset management, legal ethics, collaboration and innovation strategies for law firms and corporate legal departments, and professional development. Previously, Carlo served as Senior IP Counsel at General Electric and energy technology company Baker Hughes, and practiced law at firms on the East Coast and in the Midwest, most recently as a partner. He is the inventor of two United States patents directed to digital sheet music technology.

Recent Articles by Carlo Cotrone

Is Your Corporate IP Department a Trick or a Treat? Beware of Spooky Costume Choices

CEOs, general counsels, and other senior leaders in a corporation often take a hands-off approach to IP strategy and execution, heavily delegating these functions to in-house IP counsel and related team members. This isn’t surprising given the esoteric nature of many IP matters and the extraordinary demands on senior leaders coming from all corners. The trust placed in corporate IP departments may be substantial, carrying with it largely unfettered discretion to set the IP agenda. Unfortunately, those outside the IP field may feel ill-equipped to verify that such trust is well placed. The worst-case result may be misaligned IP and business strategies, enormous spend, and missed opportunities.

Lights, Camera, Impact: The Case for Video-Based Online Meetings in the IP Context and Beyond

In the IP field, and countless others, online or virtual meetings have become ingrained in professional life, an enabler of remote working in the age of COVID-19 and beyond. Conference platforms such as Zoom, Microsoft Teams, Cisco WebEx, Google Meet, GoToMeeting, Slack, and BlueJeans are now essential tools for collaboration within and between enterprises. It doesn’t matter if you’re a tech enthusiast, straggler, or somewhere in the middle. You’ve had to adopt the technology or be left behind. Although united as users, we don’t uniformly leverage the functionality available on conference platforms. Notably, some of us diverge in our use, or non-use, of webcams during online meetings.

Using LinkedIn for IP Business Development: Winning (and Losing) Strategies

As of December 2020, LinkedIn, Microsoft’s social networking service for professionals, has over 722 million total members in 200 countries and regions worldwide. Its growth seems unstoppable: the service continues to attract legions of newcomers to the workforce and more seasoned late adopters. Meanwhile, existing members are expanding their engagement, leveraging LinkedIn in new ways they hope will prove fruitful. Intellectual property professionals—defined broadly here as persons or entities whose professional work involves or relates to IP or IP practitioners—abound as members on LinkedIn. Law firm, corporate, and government attorneys and their colleagues. IP and legal service providers of all kinds, from litigation and prosecution support to software and IP monetization. Judges and law school professors. Legal associations, recruiters, and producers of IP conferences. The list goes on. Not surprisingly, corporate IP attorneys like myself are constantly typecast as LinkedIn buyers, viewed as a source of coveted business in a highly competitive field. For me, LinkedIn has become the single most active forum where sellers attempt to pitch me services. This has been both a blessing and a curse, an opportunity to be impressed—or not.

Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO

Despite their best efforts, patent practitioners may reach an impasse during negotiations with patent examiners at the United States Patent and Trademark Office (USPTO). If an applicant still desires patent protection, it can authorize the filing of a notice of appeal to the Patent Trial and Appeal Board (PTAB) and an associated appeal brief. Thus begins an ex parte appeals process in which a panel of at least three administrative patent judges (APJs) considers patentability of the rejected claims. Over the years, I’ve observed some patent attorneys and agents approach ex parte appeals as essentially a document assembly exercise: arguments from past Office action responses are pasted into a template and then submitted to the PTAB. In my view, such an approach represents a missed opportunity to present the strongest possible case for patentability. In a worst-case scenario, it may even prevent a client from securing the patent protection it deserves. To maximize clients’ chances of success, practitioners instead should approach appeals with the mindset of a strategist and advocate.

Past Events with Carlo Cotrone