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IP Law Update September 2014: Volume 3, Issue 3

We hope everyone had a pleasant summer … now it’s back to work! In this issue, we address: a discussion of the special privacy and information security issues related to mobile apps; A discussion of the new Canadian anti-spam law and its implications for US companies; background on the meaning to you of a trademark dispute involving soccer superstar Cristiano Ronaldo; a USPTO temporary pilot program allowing expedited processing of patent applications; and, some elaboration on the implications of the US Supreme Court’s recent copyright law decision in the Aereo case

Expansion at FisherBroyles New York Office Continues; Adds Legal Experts in Employment, Commercial Real Estate and Corporate Law

NEW YORK AND ATLANTA, September 17, 2014 – FisherBroyles LLP (FisherBroyles) grows its New York office with the addition of former Viacom executive Joseph M. Saburn, energy executive Matthew T. Stanger and veteran business counsel Jay L. Silverberg as partners.

Lisa A. Carroll Back to attorneys page

Lisa Carroll

Chicago Office Managing Partner

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Practice Areas:

  • Commercial Transactions
  • Contests & Sweepstakes
  • General Corporate
  • Intellectual Property
  • International
  • Internet E-Commerce
  • Litigation & Risk Management
  • Outsourcing
  • Privacy & Data Security
  • Technology

Large Firm Experience:

  • Bell, Boyd & Lloyd LLP (now K&L Gates LLP)

Corporate Experience:

  • BigMachines, Inc., Vice President and General Counsel
  • Applied Systems, Inc., Assistant General Counsel

Bar Admissions:

  • Illinois
  • United State Court of Appeals for the Federal Circuit
  • United States District Court for the Northern District of Illinois
  • United States District Court for the Western District of Michigan
  • United States District Court for the Western District of Wisconsin

Education:

  • The John Marshall Law School of Chicago, LL.M, Intellectual Property, 2000
  • The John Marshall Law School of Chicago, J.D., 1998
  • The University of Illinois Champaign-Urbana, B.S., Broadcast Journalism, 1990

Biography:

Ms. Carroll concentrates her practice in the area of Intellectual Property Law, including IP transactions, trademarks, trade secrets, and copyrights, with a particular focus on drafting and negotiating technology agreements, including SaaS subscription, co-development, and software license and assignment agreements.  She regularly counsels technology companies about how to perfect, enforce, and maximize their IP portfolios in the US and abroad and has prosecuted and maintained large, international trademark portfolios for international companies.  Ms. Carroll’s practice also comprises advising companies about the ever-evolving information security standards, such as ISO 27001.  As both outside IP counsel and in-house General Counsel, she has worked with some of the leading technology companies in their respective spaces and start-ups carving brand new spaces.  Ms. Carroll brings a practical perspective to advising technology companies that reflects the financial, operational, and administrative opportunities and challenges of the organization, today and as it grows.

As Assistant General Counsel for Applied Systems, Inc. and then Vice President and General Counsel of BigMachines, Inc., Ms. Carroll worked closely with all business units of the company, including worldwide sales, development, product management, cloud/hosting services, customer support, professional services, and finance.  No question was too small or issue too seemingly non-legal in nature.  As a result, she has a vast reservoir of real-world experience from which she draws in anticipating issues and advising clients.

Prior to joining Applied Systems and BigMachines, Ms. Carroll was an associate and then partner at Bell, Boyd & Lloyd LLP.  Her practice there included large patent litigations as well as copyright and trade secret cases in the federal and state courts of several jurisdictions.  With this experience, she bears in mind not just how contractual provisions will be performed but how they might be litigated when drafting and negotiating agreements.

Ms. Carroll has also been an Adjunct Professor of Law in the IP program at The John Marshall Law School of Chicago since January 2007.  She teaches a course about patent law to aspiring IP attorneys, who will not prosecute patents, with an emphasis on the intersection and the differences between patent and other intellectual property rights as well as the fundamentals of patent prosecution, licensing, and infringement.

Publications:

  • Lisa A. Carroll – “A Better Way to Skin The Cat:  Resolving Domain Name Disputes Using State Unfair Competition Law” – ABA IP Newsletter (Winter 2000), republished in ABA GP Solo Magazine (September 2000)
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