Christopher J. Palermo's Profile Image

Christopher J. Palermo

Fax: +1-408-414-1076

Focus: Patents | Trademarks | Licensing | Copyright

Mr. Palermo concentrates his practice on patent risk analysis, patent 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. He has been a testifying witness on patent non-infringement and invalidity matters for Fortune 1000 companies and has an active opinion and experting practice. He is a Silicon Valley native and has worked in the IP field since 1988, primarily advising companies in the fields of AI and machine learning, e-procurement, security, networking, telecommunications, object-oriented software, and the World Wide Web. Sub-specialties include medical devices, speech recognition, voicemail, e-commerce, cryptography, and digital imaging. He was a full-time patent litigator early in his career and served two years at NeXT Software, Inc. in general in-house practice.

Professional Background

  • 2000 - present – Hickman Palermo Becker Bingham LLP
  • 1997 - 1999 – Private practice—Silicon Valley law firms
  • 1995 - 1997 – Associate General Counsel, NeXT Software, Inc.
  • 1989 - 1997 – Private practice—Law firms in Washington, DC; Pasadena, CA; Palo Alto, CA

Education

  • 1989, J.D. – University of California, Hastings College of the Law, San Francisco, CA
  • 1986, B.A. Communication Arts & Computer Science – Loyola Marymount University, Los Angeles, CA

Professional Activities and Memberships

  • Intellectual Property Owners Association—Firm representative
  • International Trademark Association—Firm representative
  • American Intellectual Property Law Association—Member
  • Chartered Institute of Patent Attorneys (London, UK)—Foreign Member

Bar Admissions

  • District of Columbia – 1989
  • California – 1991
  • United States Patent & Trademark Office – 1997

Publications and Lectures

“A United States Ontology Right,” Proceedings of 2019 AIPLA AI/ML Roadshow, Computer History Museum, Mountain View, California, November 12, 2019

“The State of § 101 Patent Eligibility for Ex Parte Applicants in the United States,” Proceedings of 18th Advanced Patent Law Institute Mountain View, California, December 14, 2017

[Book Reviews] “Five Best: Silicon Valley,” unpublished, 2015

Lecturer, United States Patent Law, University of London Queen Mary College Certificate in Intellectual Property, London, United Kingdom, 2005 - 2011

“Changes in USPTO Rules, Practice and Policy,” University of Texas Advanced IP Law Institute, Palo Alto, California, December 2011

“The Therasense Decision and Its Impact,” San Francisco IP Law Association, July 2011

“Hot Topics in United States Patent Law, CIPA Congress, London, UK, 2011

“Effective Examiner Interviews,” University of Texas Advanced IP Law Institute, Palo Alto, California, December 2010

“Toward Successful United States Software Patents,” Chartered Institute of Patent Attorneys (CIPA) (UK) CIPA Congress, London, UK, 2009

“Successful Multilateral Patents,” Law Seminars International, Washington, DC, April 2007 and 2008

Patents Interactive Drafting Workshop, Chartered Institute of Patent Attorneys (UK), London, UK, 2007

“Update on PCT Practice,” formal client presentation, February 2004

“Essential Elements of a Corporate IP Program,” CLE International’s Establishing Effective Corporate IP Programs Conference, San Francisco, California, December 15, 2003

“Introduction to Patents for Engineers,” California Polytechnic University, San Luis Obispo, October 15, 2003

Panel Moderator and Co-Producer, Kilburn & Strode USF European IP Seminar (all-day conference featuring J. Thomas McCarthy, Robert Barr of Cisco Systems, and European Patent Office Group Director), San Mateo Marriott Hotel, June 10, 2003

“How to Read a Patent—Critical Evaluation of Patent Claims for Non-Specialists,” Intellectual Property Society, Palo Alto, California, March 11, 2003

“Patent Protection for E-Commerce Inventions,” CLE International’s E-Commerce Conference, Dallas, Texas, May 8, 2000

“Disclosing and Claiming Software Inventions,” presented to Campbell & Flores, La Jolla, California, August 24, 1999

“Only the News That’s Fit to Print: Student Expressive Rights in Public School Communications Media After Hazelwood v. Kuhlmeier,” 11 COMM/ENT Hastings Communications & Entertainment Law Journal 35, 1988, reprinted in First Amendment Law Handbook 1990 (Clark-Boardman)

“Current Developments in Licensing of Special Import for Electronics, Computer and Software Patents,” AIPLA Advanced Computer and Electronic Patent Practice Seminar, San Diego, California, June 1998

“Managing Online Software Distribution,” presented to State Bar of California Financial Institutions Committee, San Francisco, California, December 1995

Reviewer, ACM Computing Reviews, 1995

“Fundamentals of Intellectual Property Law Business Development,” American Bar Association, Annual Meeting, New Orleans, Louisiana, August 7, 1994

“Software Engineering Malpractice and Its Avoidance,” Proc. 3rd Int’l Symposium on Software Reliability Engineering, 1992

“Software Engineering Malpractice and Its Avoidance,” presented at 3rd Int’l Symposium on Software Reliability Engineering, Research Triangle Park, North Carolina, October 7, 1992

“The Sweet Smell of Success: Registrability of Fragrance, Taste and Texture Marks after In Re Clarke,” 1(3) Intell. Prop. 217-226, Harwood Academic Pub. GmbH, 1991, reprinted in 42 Patent Management 775 (Tokyo, Japan, 1992)

“United States Regulation of Technology and Technical Data Exports,” 1(2) Intell. Prop. 89-110 (1990), reprinted in 41 Patent Management 577 (Tokyo, Japan, 1991)

Awards and Honors

  • Northern California Super Lawyers – 2006, 2008, 2010