Trojan, R. Joseph

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Address: 9250 Wilshire Boulevard Suite 325, Beverly Hills, CA 90212
Lawyer Firm: Trojan Law Offices
Phone: (310) 777-8399
Fax: 310-777-8348

Areas of PracticePatent Litigation, Trademarks Litigation

R. Joseph Trojan is a registered patent attorney and trial lawyer with more than 20 years’ experience obtaining and enforcing patents and trademarks throughout the world for his clients. Holding degrees in biological sciences as well as in law, Mr. Trojan’s practice has a particular focus in the life science technologies including biotechnology, medical devices, organic chemistry, pharmaceuticals and more. His range of legal acumen is essential to navigating the increasingly complex regulatory and policy challenges related to the research and development in these areas. Understanding that the biomedical industry is a high stakes game with billions of dollars at risk, Mr. Trojan works aggressively on behalf of his biomedical, pharmaceutical and biotechnology clients to successfully patent devices and processes, and to defend issued patents.

As an accomplished trial lawyer, he has extensive experience litigating patents, trademarks, and trade dress cases throughout the United States. Litigation can be a costly endeavor; therefore, Mr. Trojan works to resolve disputes, when possible. However, should a case proceed to trial, he is skilled at presenting complicated legal and scientific issues to judges and juries in a clear manner using innovative techniques to obtain successful outcomes.

Mr. Trojan has effectively argued appeals before the Ninth Circuit Court of Appeals and the Federal Circuit Court of Appeals in Washington, D.C. With respect to licensing, he has negotiated complex multinational patent licenses for his clients and has developed effective licensing strategies for monetizing entire patent portfolios.

Regularly lending his expertise to the media, Mr. Trojan has provided commentary and articles on intellectual property matters in leading industry trades such as Patent World, Pharmaceutical Law Insight, Los Angeles Business Journal and Orthopedic Design & Technology. He also serves on the editorial board covering intellectual property topics for Los Angeles Lawyer, the official magazine of the Los Angeles County Bar Association. In addition, Mr. Trojan is conversational in Japanese.

He is admitted to the State Bar of California, U.S. District Court, Central and Northern Districts of California, U.S. Court of Appeals, Second, Ninth and Federal Circuits; 1994, U .S. District Court, District of Arizona; U.S. Supreme Court; and is registered to practice before U.S. Patent and Trademark Office.

Representative Cases:Akazawa v. Link New Technology Intern., Inc., 520 F.3d 1354 (Fed. Cir. 2008)International patent case holding that Japanese law controls ownership of a United States patent when the owner of the patent is Japanese.

Slip Track Systems, Inc. v. Metal Lite, Inc., 304 F.3d 1256 (Fed. Cir. 2002)Clarified rules for resolving patent ownership disputes when two inventors claim to have invented the same invention.

Slip Track Systems, Inc. v. Metal Lite, Inc., 159 F.3d 1337 (Fed. Cir. 1998)Established that a jury trial in district court is the proper forum for resolving fights between inventors over who was the first to invent when both have obtained a patent for the same invention rather than a reexamination proceeding in the Patent Office.

Sengoku Works, Ltd. v. RMC International., Ltd., 96 F.3d 1217 (9th Cir. 1996)Holding that between a foreign manufacturer and United States distributor, trademark rights are presumed to be owned by the foreign manufacturer.

Murray v. Cable National Broadcasting Co., 86 F.3d 858 (9th Cir. 1996)Holding that the Ninth Circuit does not recognize reverse confusion claims in trademark cases.

T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996)Seminal decision establishing the Federal Circuit’s test for analogous use in trademark ownership disputes.

Ocean Garden, Inc. v. Marktrade Co., Inc., 953 F.2d 500, (9th Cir. 1991)On the brief only: retained to prepare portion of brief addressing extraterritorial jurisdiction.

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