Eugene Lieberstein

Of Counsel

New York
T 212.589.4634  |  F 212.589.4201

Eugene Lieberstein represents clients in patent, trademark, and copyright matters in all technical fields. For 15 years, Eugene has served as patent and licensing counsel at Union Carbide Corporation, advising the corporation in their licensing of patent technology and providing transactional assistance in contract negotiation and preparation in the construction of licensed chemical plants. Prior to his legal career, Eugene was a staff engineer with Western Union Telegraph Co., where he was involved in electronic design and development in the field of technical communications, and served as a patent examiner at the USPTO. This background, combined with his technical degrees in electrical engineering and physics, gives Eugene a unique perspective and enables him to pinpoint his clients' needs and develop solutions that address the legal and technical aspects of their businesses.

Select Experience

  • Negotiates and prepares technology contracts covering transfer and/or licensing of chemical technology and know-how, independent of, or in addition to, turn-key chemical plant construction worldwide for Union Carbide. Additionally, licenses patent technology for client.
  • As senior patent counsel to Union Carbide, handled all transactional legal matters relating to intellectual property. Supervised patent prosecution in material sciences and all computer-related patent filings, including software and business method patents. Was liaison to outside counsel for litigation matters pertaining to intellectual property.
  • Represented client in interference proceedings before Board of Patents and Interferences. Won all proceedings for client.
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Experience

  • Negotiates and prepares technology contracts covering transfer and/or licensing of chemical technology and know-how, independent of, or in addition to, turn-key chemical plant construction worldwide for Union Carbide. Additionally, licenses patent technology for client.
  • As senior patent counsel to Union Carbide, handled all transactional legal matters relating to intellectual property. Supervised patent prosecution in material sciences and all computer-related patent filings, including software and business method patents. Was liaison to outside counsel for litigation matters pertaining to intellectual property.
  • Represented client in interference proceedings before Board of Patents and Interferences. Won all proceedings for client.
  • Represented client during appeal before Federal Circuit Court of Appeals related to invalidity of client's reissue patent. Matter was originally decided in favor of examiner at USPTO, stating client did not have right to reissue patent. Appealed decision, a rare occurrence in patent litigation, and obtained reversal of decision at appellate level.
  • Handled patent prosecution in diverse fields of technology inclusive of organic electroluminescent semiconductors and superconductivity.
  • Served as co-counsel in two patent litigations.
  • Litigated three patent interferences.

Memberships

  • AIPPI-International Intellectual Property Association
  • American Intellectual Property Law Association
  • International Intellectual Property Society
  • Licensing Executive Society
  • American Bar Association

Community

  • Actively involved in mayoral contest and assisting Democratic candidate in Stanford, Connecticut

Services

Prior Positions

  • Western Union Telegraph Co.: Staff Engineer
  • USPTO: Patent Examiner

Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Second Circuit
  • U.S. District Court, District of Connecticut
  • U.S. District Court, Southern District of New York
  • U.S. Patent and Trademark Office, Registration No. 24,645
  • Connecticut
  • New York

Education

  • LL.M., New York University, 1982,
  • J.D., New York Law School, 1963
  • B.E.E., The City College of New York, 1960