Gregory Bernabeo practices intellectual property law with an emphasis on the strategic use of IP as an offensive and defensive tool to help his clients achieve their business objectives. Greg has worked with a broad range of clients spanning Fortune 50, large domestic and multinational corporations, mid-sized and family-owned companies, emerging growth start-ups and entrepreneurs, as well as universities and health systems.
His multi-disciplinary educational background includes engineering, law and business degrees, and he enjoys using his diverse client representation experiences to provide sophisticated yet practical advice according to each unique client’s needs.
A seasoned IP attorney, Greg’s experience spans the full IP life-cycle, including:
- pre-incorporation meetings with innovators to identify strategically-meaningful intellectual property;
- development and implementation of domestic and foreign IP strategies;
- performance of IP clearance studies;
- preparation and prosecution of patent, trademark and copyright applications;
- analysis and counseling prior to licensing or assertion of IP rights; and
- enforcement of IP rights.
Greg regularly counsels as to clients’ non-infringement of competitors’ patent rights, which often entails developing design-around solutions to avoid the patent rights of others. He often conducts corporate IP audits to identify protectable proprietary information, and performs transactional due diligence to assess IP portfolios in the licensing and M&A contexts.
Greg has been involved in a broad range of transactional work, ranging from performing IP due diligence in connection with mergers, asset purchases and divestitures, to preparation of IP policies and procedures, to drafting agreements for domain name sales and transfers, and protection of his clients’ interests through confidentiality, manufacturing, licensing, consulting and employment agreements.
Greg’s experience further includes a broad range of IP enforcement experience, including enforcement of patent and trademark rights through assertion letters, administrative proceedings, arbitration and litigation, and is supported by vast experience in a broad range of pre-litigation analysis and counseling. Greg’s experience includes inter partes proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and arbitration under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP).
- Villanova University School of Law, JD, 1997
- Villanova University School of Commerce and Finance, MBA, 1997
- Bucknell University, BS Mechanical Engineering, 1993
- US Supreme Court
Rate : $$$