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Faculty Carl Bilicska
Vice President, IP Counsel at
IPValue
Admitted Jurisdictions
Practice Areas
Biography
Carl Bilicska is a registered US patent attorney with 20 years of experience in Intellectual Property (IP). Currently, Carl is Vice President, Legal at IPValue where he asserts, negotiates and licenses IP portfolios, values IP portfolios, and develops and executes IP investment strategies. Prior to joining IPValue, Carl was VP Licensing at TnT IP, and before that, Senior Corporate Counsel at Nokia (previously Alcatel-Lucent) where he practiced in diverse areas including patent licensing, patent prosecution, portfolio development, and patent monetization strategy development. Prior to a career in law, Carl was an electrical engineer with over 10 years’ experience involving the design and development of hardware and software solutions. Carl has a Bachelor’s degree in Electrical Engineering and a Master’s degree in Computer Science from New Jersey Institute of Technology. Carl also received his Juris Doctorate from Rutgers University School of Law, graduating Magna Cum Laude and receiving the Philip Kravitz Memorial Prize and the ABA/BNA Award for Excellence in Intellectual Property Law.
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Speaking Engagements
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Industry Spotlight: IOT, 5G, and Connected Cars
View SpeechDecember 10, 2020
New York, New York (Remote)7th Annual IP Dealmakers Forum
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Law Department as Profit Center: Strategies for Going from Cost Center to Revenue Generator
View SpeechOctober 10, 2016
CaliforniaAssociation of Corporate Counsel (ACC) Annual Meeting
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IP Licensing Round Table
View SpeechMay 12, 2016
Newark, New JerseyGibbons Institute of Law, Science & Technology
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Articles & Publications
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Developing a Patent Monetization Program
March 01, 2021
Companies often create patent portfolios to protect and maintain their valuable intellectual property assets. However, the costs associated with patent portfolios are high and companies increasingly seek to monetize their patent portfolios to generate revenues. This article explains key aspects of patent monetization and provides guidance for companies developing a patent monetization program.
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Patent Monetization
November 16, 2020
A Practice Note addressing patent monetization. It discusses considerations for patent monetization, including developing a licensing program, marketing a portfolio, analyzing the patent assets, and creating and using claim charts.
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Functional Claiming for Computer-Implemented Inventions
March 12, 2018
A Practice Note addressing the use of functional claim language for computer-implemented inventions. It includes practice tips to more broadly claim the invention while minimizing potential indefiniteness rejections and avoiding means plus function claim construction.
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Patent Valuation: Qualitive Considerations
October 14, 2016
A Practice Note discussing determination of the value of a patent portfolio. Topics addressed include classes of potentially infringing products or services, market players and limitations and claim construction and invalidity risks.
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Patent Licensing: Negotiating a Reasonable Royalty
March 11, 2016
A Practice Note discussing royalty determinations in patent negotiations. Topics addressed include reasonable royalty rate and base determinations and identifying and applying negotiation-specific risk and business considerations to negotiate a reasonable royalty for a patent license.
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