Raymond E. Farrell

Raymond E. Farrell Partner

Ray Farrell is a senior partner and co-founder of the firm with extensive experience in advising U.S. and international clients of all sizes on the effective development and utilization of their patent and trademark portfolios, with an eye towards achieving optimal return on the resources dedicated by a given client to its intellectual property strategy.  Additionally, he advises clients on navigating freedom-to-operate issues to help them minimize risks while executing product launches or brand development. This experience was acquired over twenty-five years working with clients on the development of complex IP portfolios and commercial product launches in highly litigious environments.

After first learning what each client’s unique business goals and objectives are, he then works with the client to formulate an overall intellectual property strategy to achieve those milestones.  He continuously works with the clients to ensure that any changes, either to the client’s vision or the laws potentially affecting that vision, are addressed by advising the client of appropriate options, thereby ensuring a highly efficient and continuously optimized plan of execution.

With a continuous attitude of “we are just getting started,” Mr. Farrell enjoys perfecting client service delivery processes and developing the careers of aspiring IP professionals as well as learning alongside them in order to offer the most effective and efficient team to best serve the needs of the firm’s clients.

Mr. Farrell also has a strong belief in mentoring startup entrepreneurs so they can receive the early guidance necessary to set them on a sound trajectory for their venture’s success.  To this end, he continuously donates extensive amounts of time educating startup entrepreneurs on the benefits of a sound intellectual property strategy to optimize their venture’s growth and either their continued development or ultimate exit.  To help expand upon his individual mentoring efforts, he was principally involved in organizing participation in the MIT Venture Mentoring Outreach Program, a consortium made up of prestigious scientific research laboratories, academic institutions, business incubators, and a business accelerator.

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Education

  • St. John’s University School of Law, J.D., 1989
  • Manhattan College, Bachelor of Engineering, Mechanical Engineering, 1985

Admissions

  • States of New York and Connecticut
  • District Courts for the Southern and Eastern Districts of New York
  • Court of Appeals for the Federal Circuit
  • United States Patent and Trademark Office

Associations

  • American Intellectual Property Law Association
    • IP Practice in Japan Committee and Delegation member
    • IP Practice in Europe Committee and Delegation member
  • New York Intellectual Property Law Association (NYIPLA), Board of Directors (2013-2016)
  • U.S. Bar — Japanese Patent Office Liaison Council (NYIPLA delegate and Council Chair)
  • Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
    • U.S. Steering Committee (2015-2016)
  • International Trademark Association
  • Accelerate Long Island, Venture Mentoring Service – Founding member and Steering Committee
  • Clean Energy Business Incubator Program, Stonybrook University – Board of Advisors
  • Eastern New York Intellectual Property Law Association — Past President and Board of Managers
  • Molloy College, Rockville Centre, New York — Board of Trustees and Executive Committee
  • Composite Prototyping Center – Board of Directors

Mr. Farrell has expertise in addressing clients’ needs in a wide range of technologies including mechanical and electromechanical devices, business methods, and computer software.  Additionally, he has led teams of the firm’s attorneys to serve clients’ needs in other technologies including the life sciences and complex electrical engineering areas.

Over the course of more than twenty-five years he has prepared and prosecuted then later trained and oversaw the development of many of the firm’s patent attorneys to effectively serve our clients on the preparation and prosecution of thousands of patent applications.  Mr. Farrell has also performed extensive product clearance investigations and analyses for clients in high stakes industries where commercial significance of a product may be in the hundreds of millions of dollars.  He has also led numerous IP due diligence investigations involving exhausting analyses on the IP rights of targeted acquisitions with deals often valued in excess of fifty million dollars.  He has worked with some clients for twenty years or longer, through numerous management cycles, to provide the continuity and depth of institutional knowledge necessary to smoothly transition to incoming in-house managers.

Mr. Farrell has led the firm’s effort to develop an extensive network of international associates, each of which is continuously evaluated to ensure the highest quality and cost efficient service to the firm’s clients for their intellectual property needs outside the U.S.

In recent years he has served on influential committees and in leadership positions of several of the most prominent domestic and international intellectual property associations.  This allows him to be involved on the front lines of addressing the ever changing landscape of intellectual property law in order to continuously deliver the most current and carefully thought out advice to the firm’s clients as applies to their particular issues.

Publications / Speaking Engagements

  • June 17, 2016: Update on Patentability of Software: The Most Recent Case Law and Doctrine”, AIPPI-Italy Annual Meeting, Milan, Italy
  • April 18, 2016: “Exhaustion of U.S. Patent Rights”, Licensing Executive Societies-Japan, Tokyo, Japan
  • January, 2016: “Laches as a Defense to Patent Infringement”, AIPLA Mid-Winter Institute, LaQuinta, California
  • June, 2015: “Revisiting the Question of U.S. Patent Rights Exhaution”, Intellectual Property High Court , Tokyo, Japan
  • January, 2015: “USPTO Post-Grant Procedures and Effective Use of Reissue”, AIPLA Mid-Winter Institute, Orlando, Florida
  • May, 2013: Session Chair & Moderator, Advanced Energy AERTC Conference, New York, New York
  • April, 2013: Patent Claim Workshop – Japanese Patent Attorney Association, Tokyo, Japan
  • March, 2013: “Patent Eligible Subject Matter in the US”, AIPPI-Dutch Annual Meeting, Zeist, Netherlands
  • March, 2013: “Intellectual Property 101”, Hoftstra University, Zarb School of Business Series at the Launch Pad of Long Island, Mineola, New York
  • February, 2013: Moderator: “First-to-File and the AIA: Is your Company Ready?”, NYIPLA, Morrelly Homeland Security Center, Bethpage, New York
  • January 2013: “Valid Priority Claim Recent Cases in the US”, AIPLA Mid-Winter Institute, Tampa, Florida
  • September, 2012: “AIA Implementation: How to Update Your Patent Strategies”, NYIPLA, Briarcliffe Manor, New York
  • April 2012: “Interpretation of Product-by-Process Claims in the US”, Japanese Patent Attorney Association, Tokyo, Japan
  • Contributor: “The Regulatory Environment: Patents, Trademarks, and Copyrights”, Marks’ Standard Handbook for Mechanical Engineers, 11th Edition, McGraw-Hill Professional, 2007