Gary has extensive experience in all fields of intellectual property law and in litigation involving intellectual property issues, including matters related to:
- unfair competition
Gary prepares and prosecutes mechanical, electrical and computer-related patent applications, as well as counsels clients on intellectual property issues and is well-versed in licensing, infringement, validity and due diligence studies. He also manages international trademark portfolios for U.S. and foreign companies, including those in the fields of chemicals manufacturing, fashion and clothing, medical devices and automotive products.
Among the matters he has handled, Gary has:
- Successfully settled a trademark dispute over worldwide rights involving six legal actions in multiple countries through the use of mediation.
- Represented a public company as the team leader for a due diligence review of the Patent and Trademark assets of a target company in the petroleum industry.
- Successfully defended a State college in a trademark action filed by another public college with a similar name which resulted in the other college changing its name.
- Successfully asserted trademark rights in opposition proceedings before the U.S. Patent and Trademark Office for private and public organizations including fortune 100 companies, public and private universities and colleges, federally chartered corporations and governmental authorities.
- Prepared and filed U.S. and international patent applications for a major international pharmaceutical company on a device in making flu vaccines, which has been featured in the national news for producing the H1N1 vaccine.
- Successfully obtained a U.S. trademark registration for a top investment firm’s house service mark after another law firm advised that overcoming the U.S. Patent and Trademark Office’s rejection would be impossible.
- Negotiated complex multiparty copyright acquisition and license agreements involving the interests of major universities, U.S. government and two private companies, for a U.S.-based company.
- Developed a procedure and methodology for recording a new type of assignment of patent and trademark rights in more than 30 countries for a major European public company after other law firms advised such recordals could not be done.
- Represented a major pharmaceutical company in conducting a due diligence study of a large patent portfolio of a company the client sought to purchase. Identified problems related to the prosecution of the patent applications that diminished their value, thereby protecting the client from significant problems when it declined to go through with the purchase.
- Represented a defendant in the high-profile case, Chiuminata Concrete Concepts, Inc. v. Cardinal Industries, Inc., before the U.S. Court of Appeals for the Federal Circuit and obtained a reversal of a lower court ruling on the issue of interpreting “means plus function” language in a patent.
Before Fox Rothschild
Prior to joining the firm, Gary was chair of the Trademark Practice at a prominent boutique intellectual property firm.
Beyond Fox Rothschild
Gary is a former board member for the Pennsylvania Intellectual Property Law Association. He has been an invited speaker at continuing legal education and professional association meetings, including the meeting of the combined Connecticut, New York, New Jersey and Pennsylvania Intellectual Property Law Associations. Gary previously served on the Advisory Council for the Mechanical Engineering Department of the University of Delaware.
Honors & Awards
- Selected to the "Super Lawyers" list for Intellectual Property in Pennsylvania (2005, 2006)*
- Named to “IP Stars” by Managing Intellectual Property (2017, 2020)*