Barry G. Magidoff
📞 (212) 584-1992
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In his over 50 years of practicing law, Barry G. Magidoff has provided Intellectual Property counseling and representation to clients ranging from individual inventors to large public corporations. He has counseled his clients on matters involving their new technology, their commercial rights in trademarks and copyrights, and with respect to enforcing their rights against infringers, as well as counseling them on how to avoid infringing the rights of others, and defending them from unjustified lawsuits.
Barry has helped clients in the fields of chemistry, metallurgy, mining, polymers, mechanical and chemical engineering, he has represented clients enforcing their patents and trademarks and copyrights, and defending against claims by other patent owners, or holders of trademarks or copyrights, in the courts of the United States from California to Florida.
Barry’s early extensive experience in the preparation, filing and prosecuting of patent and trademark applications in a wide range of technologies and industries, provides the necessary background for a clear understanding of the problems faced by his clients, and for determining the best ways of avoiding them, when counseling his clients, or negotiating for them, or if it becomes necessary, defending them in Court or before other tribunals. His hands-on experience before the Patent Offices and Trademark Offices of the World enables him to determine whether to question the validity and enforceability of patents or trademark registrations, or to seek a negotiated settlement when issues of infringement or use arise.
His past work has involved polymer chemistry and the chemistry of additives for the enhancement or protection of polymer properties; petro-chemistry and petroleum production and refining; mining and ore beneficiation and refining, including operating in deep ocean environments, i.e., 35,000 feet below the surface on the bottom of the sea; metallurgy; fluid flow apparatus; pharmaceuticals; medical and dental devices; vehicles; marine and aircraft systems; early inventions directed to energy saving techniques, including solar collectors, regenerative drive trains, fuel cells, and generally in the fields of chemistry and chemical engineering, mechanical engineering, electrical and software engineering.
Although he believes it its best to keep his clients out of the courts, for those times when it becomes necessary to go to court, whether to defend or enforce patents or trademark rights or copyrights, his long experience provides the necessary background to know how, when and where to take that step. His counseling is informed by his long experience and by his concern for the welfare of his clients, which includes knowing when to counsel restraint and when to propose strong affirmative action. He realizes that like war, litigation should be maintained as a last resort, started or entered into only when all else fails, but being prepared for it when it is inevitable.
His representations have included a wide range of companies and individual researchers, including small aircraft manufacturers, an engineered wood products manufacturer, a dental equipment and device manufacturer, a radiation-attenuating polymer film manufacturer, fabric mills, a consumer-oriented electrical equipment manufacturer, researchers in neurologically active pharmaceuticals, plumbing and air-conditioning equipment manufacturers, specialty steel manufacturers, chemical process equipment manufacturers, pharmaceutical companies, developers of advanced highly efficient vehicles and other energy efficient devices, developers of alternative energy generation systems, a large consortium of ocean mining and refining companies, paint additive manufacturers and metal refiners, petrochemical and polymer manufacturers, and an agrochemical manufacturer, jewelry manufacturers and fabric companies.
Areas of Concentration
Global intellectual property counseling
Intellectual property licensing
Technology transfers and joint ventures
Due diligence for mergers and acquisitions
Patent preparation and prosecution, including interferences
Complex and high stakes intellectual property litigation
Trademark protection and brand enforcement
Copyright protection and enforcement
Trade dress and trade secrets
Intellectual property audits
Information technology strategies
Appellate practice before the U.S. Patent & Trademark Office, Board of Patent Appeals & Interferences, and the U.S. Court of Appeals for the Federal Circuit
Member
New York State Bar Association
New York Intellectual Property Law Association
Association of the Bar of the City of New York
Admitted to Practice
New York State
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Second Circuit
U.S. District Court for the Eastern District of New York
U.S. District Court for the Southern District of New York
United States Patent and Trademark Office
Education
B.Ch.E., Chemical Engineering, Cornell University, 1960
Juris Doctor, Fordham University Law School, 1963