Christopher J. Palermo

Partner

[email protected]

Austin

P: +1.512.322.2625
F: +1.512.322.3625
Christopher Palermo

Christopher J. Palermo has more than 30 years of experience advising clients on patent risk analysis, patent drafting and portfolio development, patent negotiation with the USPTO and worldwide, expert opinions and testimony, trademark clearance and negotiation, international trademark disputes and domain name arbitrations, licensing, privacy, and technology development agreements. Mr. Palermo has experience covering technologies related to artificial intelligence and machine learning, e-procurement, security, distributed computer systems, networking, robotics, telecommunications, object-oriented software, and internet applications. Examples of specific patent drafting areas include card payment protocols, smart agriculture, neural machine translation, grammatical error correction, e-mail security, recommendation systems, speech recognition, cryptography techniques, and digital imaging. He has extensive experience drafting claims in software cases to reduce subject matter eligibility rejections under 35 U.S.C. § 101, and in negotiating resolution with examiners. He closely tracks developments in the European Patent Office with a focus on multilateral success in patent matters. 

He has served as a testifying witness on patent non-infringement and invalidity matters for Fortune 1000 companies and has an active opinion, FTO and expert practice. He manages several large international trademark portfolios, including initiating and defending oppositions and other contested matters.

Mr. Palermo started his career as a patent litigator and served two years at NeXT Software, Inc. as the associate general counsel with responsibility for IP management.

He is a member of the Programming Subcommittee, Law Firm Committee, of the International Trademark Association. He serves as pro bono Associate General Counsel for IP matters to National Model Railroad Association, Inc.

Related Experience

  • Principal managing outside patent counsel for the world’s leading vendor of agriculture and agriscience data analysis software, with AI-ML applications, tractor in-cab applications and satellite imagery analysis.
  • Principal outside patent counsel for the supplier of the leading federated software code management, issue tracking, and collaborative communication system.
  • Outside patent counsel responsible for international patent preparation and procurement for a world leader in financial analysis and intelligence data analysis software.
  • Sole outside trademark, privacy, and patent counsel for an international market leader in electric guitars, guitar effects pedals and digital effects processors, matters in European trademark oppositions and other international contentious matters.
  • Principal outside patent counsel for a leading maker of enterprise SaaS-based e-procurement software.
  • Product patent clearance counsel for a large supplier of consumer products offered via high-volume retail on online platforms.
  • Procurement of a comprehensive portfolio of patents relating to presentation of game play data, and concession point-of-sale systems, for one of the country’s most venerable professional sports franchises.
  • Comprehensive patent FTO studies and opinions concerning coffee capsule technology for a major UK-based retailer of coffee products.
  • Main outside patent counsel for one of the nation’s largest suppliers of customized, just-in-time manufactured consumer goods and one of the country’s largest makers of personalized photo goods.
  • Trademark and licensing counsel to multiple New York Times Bestseller List authors, performing artists, actors, and musicians.
  • Principal outside trademark counsel to one of the world’s largest for-profit post-secondary educational institutions.
  • Principal outside patent counsel to the nation’s largest consumer digital coupon delivery platform, with experience in patenting point-of-sale offer systems.
  • Procurement of dozens of patents relating to advertising technology and digital offers on mobile devices, on an international basis.

Awards & Community

Recognized as a Northern California-Super Lawyer (Thomson Reuters), 2006, 2008 & 2010

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