Rimon

Marc Kaufman

Partner

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(202) 459-9882

Education

Catholic University School of Law

J.D.

Boston University

M.S., Mechanical Engineering

Previous Experience

  • Reed Smith (Equity Partner and Co-leader of Fintech Team)
  • Nixon Peabody (Partner, Patents Practice Group Leader)

Bars & Courts

  • U.S. Court of Appeals - District of Columbia Circuit
  • U.S. Court of Appeals - Federal Circuit

PROFESSIONAL ADMISSIONS / QUALIFICATIONS
  • District of Columbia
  • U.S. Patent and Trademark Office

Professional Experience

Marc Kaufman concentrates his practice in the area of patent strategy, in particular, advising clients in protecting, managing and leveraging their intellectual property assets. He has also represented clients in defending against patent assertions in district courts and through post-grant administrative proceedings in the U.S. Patent Office. Mr. Kaufman has created structured procedures to secure and enforce intellectual property rights in a market-focused manner. Marc’s practice focuses on computer software including the areas of Fintech, database technology, content distribution, and computer security. Over the last several years, Marc has actively monitored and analyzed the emerging patent landscape related to blockchain technology and cryptocurrency. Marc is a co-founder of the Blockchain IP Council.  

Enhancing a reputation as a leading voice in the area of intellectual property matters, Mr. Kaufman has spoken across the country, authored many articles, and been quoted in notable publications such as the New York Times, the Boston Globe, Forbes, Newsweek, and the Patent Trademark & Copyright Journal. Mr. Kaufman has been named to the IAM 350 Top Patent Strategists every year since its inception.

Prior to joining Rimon, Mr. Kaufman was a partner at Reed Smith. Mr. Kaufman received his J.D. from The Catholic University of America School of Law. He received his B.S. from Boston University.

Publications

  • Patent Office Institutes Post-Prosecution Patent Program, Co-Author(s): Gerard M. Donovan, 18 July 2016
  • Federal Circuit's Enfish is an Important 101 Decision, Co-Author(s): Gerard M. Donovan, Amardeep (Sonny) Grewal, 18 May 2016
  • Beyond Bitcoin: Blockchain, Co-Author(s): Ranajoy Basu, Paul Bond, Edward J. Estrada, Anthony J. Ford, Jacqui Hatfield, Tyree P. Jones, Jr., Mark S. Melodia, J. Andrew Moss, Cynthia O'Donoghue, Carolyn H. Rosenberg, Evan Thorn, Stephen I. Winter, 11 May 2016
  • New Patent Office Memo to Examiners Raises The Bar For § 101 Rejections, Co-Author(s): Gerard M. Donovan, 9 May 2016
  • Supreme Court: Should Appeal Give Deference to Lower Courts on Claim Construction? Co-Author(s): Robert R. Riddle, 17 October 2014
  • The U.S. Patent Minefield Network Interference: A Legal Guide to the Commercial Risks and Rewards of the Social Media Phenomenon (3rd Edition), 22 April 2014
  • Effective Patent Monetization Strategy IP Monetization 2012: Maximize the Value of Your IP Assets, 9 May 2012
  • Patent Monetization Cookbook: A Structured Approach to Monetizing Patents, 2012 
  • Building & Enforcing Intellectual Property Value, IP Value 2012
  • Efficient Execution of an IP Strategy IAM Magazine, 6 February 2006

Speaking Engagements

  • London Blockchain Week- The Emerging Patent Landscape Related to Blockchain Technology, London, February 11, 2019
  • Unchain Convention- Managing the Patent Threat in Blockchain Eco-Systems, Berlin, June 12, 2019
  • DC Blockchain Summit- Blockchain Technology: The Emerging Patent Risk, Washington, DC, May 10, 2018
  • Questel Seminar - Is the Blockchain still open source? Radisson Blu Portman Hotel, London,1 December 2016
  • Is the Blockchain Still Open Source? The Emerging Patent Landscape Surrounding Distributed Ledger Technology, CLE / CPD, Webinar, 28 June 2016
  • Blockchain and Digital Currency: The Emerging Patent Landscape, Webinar, 8 March 2016
  • Best Practices in Patent Monetization, "From the Nation's Capitol: A Big Year for Changes in Patentability", San Francisco, CA, Seminar / Webinar, 26-27 March 2015
  • Calculating & Proving Patent Damages: Strategic issues for proving and refuting damages claims, 18-19 September 2014
  • "Patent Valuation: Lessons from Recent Transactions in the Patent Monetization Marketplace", Twelve & K Hotel, Washington, D.C., Seminar
  • Law Seminars International Presents: Best Practices in Patent Monetization, University Club of San Francisco, San Francisco, CA, 6-7 March 2014
  • 2013 ANA Ad Law & Public Policy Conference, Four Seasons Hotel, Washington, D.C., 19-20 March 2013
  • IP Monetization 2012: Maximize the Value of Your IP Assets, "Implementing a Successful IP Monetization Program", PLI New York Center, New York, NY, 9 May 2012
  • Law Seminars International Presents: Best Practices in Patent Monetization, San Francisco, CA, CLE / CPD, 6 February 2012
  • Law Seminars International Presents: Best Practices in Patent Monetization - Strategies for Getting Value from Patents in the Corporate World, San Francisco, CA, 21 February 2011

HONORS & AWARDS

  • Winner, FinTech Sector IP Lawyer of the Year in Washington D.C. 2019. Global Law Experts
  • FinTech Sector IP Attorney of the Year – Washington D.C. 2019. Corporate INTL Magazine
  • ​Named to Intellectual Asset Management's IAM 250 - A Guide to the World's Leading IP Strategists, in 2010 and 2011
  • Named to the Intellectual Asset Management's IAM 300 - A Guide to the World's Leading IP Strategists (2012 - 2016)
  • Recognized in Client Service All-Star national survey by the BTI Consulting Group, Inc.

PROFESSIONAL AFFILIATIONS

Mr. Kaufman currently serves as Pro Bono Counsel of the Center for Transformative Teaching & Learning.


NOTABLE QUOTES

 "Then Came the Hedge Funds: Patent Death Squad Causes a Ruckus" Bloomberg, 4 June 2015