Morgan E. Malino
tel: (650) 566-9912
mmalino@kokkalaw.com
Mr. Malino specializes in representing clients in intellectual property matters of various types, including strategy development, portfolio management, acquisition, licensing, procurement, and specialized intellectual property projects. Practicing for over a decade, he has developed substantial experience in trademark and patent preparation and prosecution, trademark oppositions, licensing negotiations, asset purchase agreements, and assisting companies with the development of intellectual property strategies for technologies such as semiconductor design and fabrication, memory (e.g., Flash-replacement), and complex enterprise applications and distributed software. He has substantial expertise in semiconductor and logic design and architecture, computer hardware and software, energy-related applications, networking, telecommunications, and mechanical technologies.
Mr. Malino counsels clients on highly-specialized projects involving intellectual property strategy, including monetization, acquisition and defense, and others in the information technology, high technology, and semiconductor-related industries. Given his unique background, he also advises clients on various intellectual property-related issues relevant to technology startup companies.
Prior to joining the firm, Mr. Malino was General Counsel for Unity Semiconductor Corporation, where he planned and directed all legal affairs of the venture funded startup. Prior to joining Unity Semiconductor Corporation, he gained significant experience working in prominent private practice law firms in Washington, D.C., Palo Alto, Mountain View, and Baton Rouge.
Mr. Malino received his J.D. from the George Washington University Law School, one of the top three intellectual property law schools in the United States. He also earned a B.S. in Engineering Science (an honors major) from the Pennsylvania State University. While at the Pennsylvania State University, he wrote a pioneering honors thesis in 1993 on the application of virtual reality technologies to manufacturing environments. He served as a legal intern to the Honorable Judge Frederick D. Dorsey in the Superior Court for the District of Columbia and on the editorial staff of the American Intellectual Property Law Association's Quarterly Journal. As part of his technical experience, he developed computer software for UOP, a Honeywell company developing technology for the energy industry. He is a frequent lecturer, having spoken at numerous conferences and events.
Mr. Malino is a registered patent attorney authorized to practice before the U.S. Patent and Trademark Office, a registered in-house counsel with the State Bar of California, and admitted to practice law in Louisiana and Maryland. He is also member of the Association of Corporate Counsel and the National Association of Corporate Directors.
Speaking Engagements:
- Panel Member for "Best Practices for Strategic Licensing" portion of the Maximizing Returns on IP Portfolios Conference, March 2009
- Panel Member for "Winning Corporate Partners and Investors" Advanced Technology Program, National Institute of Standards and Technology, September 2005
- Organizer and presenter for "What You Need to Know About Patents," California Society of Certified Public Accountants, July 2003
- "American Inventors Protection Act of 1999," hosted by Carr & Ferrell, L.L.P, June 2000
- "The Digital Millennium Copyright Act," hosted by Carr & Ferrell, L.L.P., June 2000
- Faculty member for "Copyright Law for the Digital Age in Louisiana," hosted by the National Business Institute, February 2000
- Presenter for "Internet Strategies for the Paralegal in Louisiana," hosted by Institute for Paralegal Education, August 1999
- Guest lecturer at the Louisiana State University Law School on Internet-specific intellectual property issues including cyber-squatting, deep linking, and meta tagging
Publications:
- "Court Reconsiders Reverse Engineering and Fair Use," National Law Journal (October 16, 2000)
- "Protecting Your Web Site," Legal Alert - Business Notes (June 1999)
- "Trademark Rights and Piano Rebuilders: A Response," Piano Technicians Journal (Vol. 42, No. 1, Jan. 1999)
- "New Law on Year 2000 Readiness: Quick Action Required for Retroactivity," Legal Alert - Business Notes (Nov. 1998)
- "Showdown Over the Sundance Trademark," Counselor (Vol. 11, No. 3, Oct. 1998)
- "Does Your Business Have Any Trade Secrets Worth Protecting?" Legal Alert - Business Notes (Apr. 1998)