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Areas of Practice
John has been practicing law for 20 years. His practice emphasizes general client IP counseling, patent strategy, opinions, due diligence, and hands-on patent prosecution. John’s practice also includes advising clients on a broad range of commercial and intellectual property based transactions, including negotiating and drafting patent, software and technology license agreements, commercial and government contracts, development agreements, and non-disclosure agreements. His practice further includes advising clients on rights in patents, technical data, and software under government FAR/DFAR provisions and government contract provisions included in SBIR contracts and CRADA’s.
Professional Experience
Prior to joining Occhiuti & Rohlicek LLP, John was Vice President, General Counsel and Secretary of American Superconductor Corporation (AMSC), a publicly traded global energy technologies company, focused on the renewable energy and electric grid markets. He was responsible for AMSC’s legal, human resources and communications functions. John joined AMSC in 2000 as Intellectual Property Counsel, became Director of Intellectual Property in 2001, and remained in that role until becoming General Counsel in January of 2008. Before joining AMSC, John worked at Raytheon and Motorola in Intellectual Property positions of increasing responsibility. Prior to joining Motorola, he was in private practice as a patent attorney.
China Experience
While at AMSC, John led a process of asserting the company’s intellectual property rights on an international basis for the theft of critical software by China’s Sinovel Wind Group Co. Ltd, who conspired with an ex-employee of AMSC. Major milestones included:
· Assisting Austrian authorities in securing a guilty plea, conviction, and imprisonment of the ex-employee for conspiring with Sinovel;
· Pursuing a series of Chinese civil intellectual property law suits, a criminal complaint, and a commercial arbitration for breach of contract against Sinovel, damages over $1B;
· Successfully defending, up to the Chinese Supreme Court, Sinovel’s motion to dismiss the civil intellectual property lawsuits;
· Supporting the US Department of Justice in filing criminal charges against Sinovel for stealing trade secrets, causing an alleged loss of more than $800 million.
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Practice Areas
31 years
26 years
31 years
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Chat withState: Massachusetts
Acquired: 1993
No misconduct found
State: California
Acquired: 1974
No misconduct found
321 Summer St Fl 2, Boston, MA, 02210-1725
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2013 - Present
Partner, Occhiuti & Rohlicek LLP
2008 - 2013
General Counsel, American Superconductor Corporation
2000 - 2007
Director, Intellectual Property, American Superconductor Corporation
1998 - 2000
Intellectual Property Counsel, Raytheon Co.
1996 - 1998
Patent Attorney, Motorola, Inc.
1993 - 1996
Associate, Iandiorio & Teska
1993
JD - Juris Doctor
1988
BS - Bachelor of Science
2013
Provided Testimony re Federal Sentencing Guidelines for Trade Secret Theft and Economic Espionage
2013
Panelist for Strategy to Mitigate Theft of U.S. Trade Secrets
English