Joseph Manak

vCard

Practice Areas

  • Intellectual Property

Bar Admissions

  • New York State
  • United States Court of Appeals for the Federal Circuit
  • United States District Courts:
  • Southern District of New York
  • Eastern District of New York
  • Western District of New York
  • United States Patent and Trademark Office, June 1988 (Registration No. 33,013)

Bar Associations

  • Société de Chimie Industrielle, 2010 –Present
  • Association of the Bar of the City of New York, 2010-2012, Antitrust Committee, 1993, Computer Law Committee 1994, Software Protection Committee
  • International Trademark Association, 2009-Present
  • Controlled Release Society, 1998-Present
  • Association Pour la Protection de la Propriété Industrielle (AIPPI), 1998
  • Licensing Executives Society, 2004 Membership Committee, 1991 Work Shop Committee, 1990 Legal Affairs Committee
  • New York Intellectual Property Law Association, 1994 Judge’s Dinner Committee, 1993 Antitrust and Misuse Committee, 1990 Alternative Dispute Resolution Committee

Education

  • New York Law School, J.D., 1987
  • Manhattan College, B.S., Chemistry, 1983

Large Law Firm Experience

  • Kaye Scholer 1988-1997
  • Graham & James/Greenberg Traurig 1997-2005

Languages

  • French

Joe Manak is a patent and intellectual property attorney, litigator, and trial lawyer who concentrates in patent prosecution, litigation, opinion work, licensing and other IP transactions, as well as copyright, trade secret, trademark, trade dress, anti-counterfeiting, antitrust and unfair competition law.  He practices in the United States Patent and Trademark Office, numerous U.S. Federal Courts, the U.S. International Trade Commission, and has instructed foreign counsel on patent matters before courts and patent offices throughout Europe and Asia.  Joe also specializes in Hatch-Waxman cases, appeals practice before the U.S.P.T.O., and has significant expertise in patent-antitrust law.  Joe has practiced with such law firms as Kaye Scholer LLP and Greenberg Traurig LLP.  Joe has a five-star AV Martindale Hubble rating and was recognized as a NY-Metro Super-Lawyer™ in 2014 and 2015.  Joe has published and lectured extensively on intellectual property and antitrust issues.

While Joe’s education focused on Chemistry and Computer Science, his patent and IP practice spans a very broad range of technologies and industries, such as software and algorithms, computer-implemented and Internet technologies, Digital Millennium Copyright Act and website takedown issues, pharmaceuticals and small molecules, genomics and proteomics, biometrics, drug metabolism, medical devices medical testing, enzyme targets, financial products, electronic and mechanical devices, fibers, drug delivery systems, aerospace and defense, fashion and consumer products.  Joe also handles anti-counterfeiting and domain name disputes in the U.S. and Asia.  He has been registered to practice in the U.S.P.T.O. since 1988.

Joe also has an information technology, software, and biotechnology transactional practice, and negotiates and drafts licenses, distribution and service agreements, joint research and collaboration agreements, software development agreements, and other agreements relating to software and the biochemical sciences.  Joe also advises clients with respect to open-source issues, and handles IP due diligence and other matters arising in mergers, acquisitions and financing.

Some of Joe’s significant matters include:

  • Worldwide patent actions and interferences concerning the dispute over the patent rights to cox-2 selective anti-inflammatories and isolated cox-2 genes.
  • Large scale Hatch-Waxman patent litigations concerning leading pharmaceuticals.
  • Multiple patent litigations concerning recombinant insulin and human growth hormone.
  • Complex patent/antitrust litigation concerning polymerase chain reaction.
  • Lead counsel on trademark licensing litigation concerning medical devices.
  • Lead counsel on anti-counterfeiting and trademark infringement disputes arising in Asia.

Awards

  • 2014-2016 New York Metro Super Lawyer – IP Litigation
  • American Chemical Society Certification
  • Gamma Sigma Epsilon, Kappa Eta Chapter
  • Chemistry Honor Society Award (2000)

Lectures and Publications

  • St. Johns School of International Business, Guest Lecturer: Intellectual Property, 2012-2013
  • U.S Supreme Court Holds Human Gene Patent Claims Invalid, PORZIO ALERT, July 17, 2013
  • Program Co-Chair: Patent vs. Antitrust Law in the 21st Century, New York City Bar Association CLE Program, June 8, 2012; Paper and Lecture: Patent Misuse In Tying Cases: Princo And Beyond
  • False Patent Marking Claims Are Not Going Away, New Jersey Law Journal, 2010
  • Adhesive and Sealants Industry (ASI) Seminar Lecture, U.S. Patents: The Lowdown on What You Need To Know, 2006
  • Patent Law Basics for the Chemical Business, American Chemical Society, 2006
  • The Law of Written Description in Pharmaceutical and Biotechnology Patents, 23 Biotechnology Law Report 30, Number 1 (February 2004).
  • The Hatch-Waxman Act Reform—How it Will Affect Branded Pharma Generics, Patent Life Cycle Management, Visiongain Group, 2004
  • U.S. Court of Appeals for the Sixth Circuit Finds Generic Drug Agreement Illegal Under Antitrust Laws, Greenberg Traurig Alert, December 6, 2003
  • Toward Consistency and Clarity in Patent Claim Construction: Markman, Hilton Davis, Southwall, and Vitronics, Amer. Bar Ass’n IPL Newsletter, Vol. 15, No. 2 Winter 1997.
  • Decisions Key to Safe Licensing, Les Nouvelles, J.Lic. Exec. Soc. Vol. XXXI No. 1, March 1996.
  • Confusion in the Law of Patent Infringement: The Federal Circuit’s Decisions in Markman and Hilton Davis, BIOTECH Patent News, vol. 9 No. 10, October 1995.
  • Federal Circuit Telectronics and Chartex Decisions Clarify Infringement Exemption For FDA Uses, BIOTECH Patent News, vol. 7, no. 9, September 1993.
  • Licensing Executives Society, 1992 Annual Meeting — Boca Raton, Florida, Workshop Leader: Licensing and the Law of Tie-ins.
  • Columbia University School of Law; 1989-1990 Lecturer: Korean Legal Studies Program In International Trade.