Maryam Imam, Esq.
direct: 408.827.3302 main: 408.827.3300 fax: 773.570.3328
Practice Groups & Technologies:
Copyrights; Licensing; Litigation Counseling; Patent Prep & Prosecution; Patent Counseling & Post-Grant; Trademarks & Unfair Competition; Computers, Software, & Business Methods; Electronics, Semiconductors, and Imaging; Mechanical Devices; Medical Devices
Office: San Jose
Ms. Imam has over twenty years of experience practicing intellectual property law and nine years of experience practicing electrical engineering and program management working for a number of defense contractors and semiconductor companies. She has drafted and procured over 600 U.S. and countless foreign patents. She has also represented clients in front of the USPTO in special proceedings such as interference, opposition and cancellation proceedings. She has filed and procured a significant number of trademarks in the U.S. and under the Madrid Protocol over the last decade. She has successfully represented clients in trademark opposition and cancellation proceedings, from inception to oral argument and decision. Ms. Imam has rendered clearance/availability opinions and counseled clients on trademark portfolio and strategy including assisting clientele develop strategies to build brand equity in their trademarks and enforcement strategies.
Ms. Imam regularly conducts searches and investigations and maintains watches on behalf of clients for patents and trademarks. She has partnered with a comprehensive network of foreign associates to assist with procuring and protecting international trademark registrations. Additionally, Ms. Imam leverages an advanced docketing service for maintenance of a healthy trademark portfolio.
Her experience also includes drafting and negotiating business transaction and agreements related to intellectual property, such as trademark settlement agreements, joint development agreements, and license and coexistence agreements.
Ms. Imam has counseled clients, including startups to mid and large-size companies, on various aspects of intellectual property law and in some cases, built entire patent and trademark portfolios for startups from inception to IPO. In one case, Ms. Imam had participated in an acquisition based primarily on a patent and trademark portfolio valued at nearly one billion dollars. Ms. Imam has testified as a patent attorney as well as having conducted discovery in various intellectual property proceedings and arbitration. She has assisted clients working closely with executive management teams, has acted as in-house counsel, and has helped to shape litigation strategies. She has in-depth engineering, academic, and industry experience, holding both a B.S. and a M.S. in Electrical Engineering.
Prior to joining Klintworth and Rozenblat IP, Ms. Imam was a co-founder of a Silicon Valley IP boutique firm, Ipxlaw Group LLP, she was with Oppenheimer Wolff & Donnelly (acquired by Fox Rothschild), and she served as the first in-house counsel at a Silicon Valley Fortune 500 company.
REPRESENTATIVE PATENT & TRADEMARK PROSECUTION EXPERIENCE
Ms. Imam has an extensive practice and is experienced in representing a number of high-tech companies. The following serves as a representative list:
■ Cirrus Logic, Inc.
■ Lexar Media, Inc. (acquired by Micron, Inc.)
■ Boston Scientific
■ Cisco Systems, Inc.
■ Invensense, Inc.
■ Form Factor, Inc.
■ Alohar (acquired by Alibaba)
■ Fastor, Inc. (acquired by Smart Modular Technologies)
■ Alta Devices, Inc. (acquired by Hanergy)
■ Magnum Semiconductor, Inc. (acquired by Gigpeak, Inc.)
■ Drexel University, B.S., Electrical Engineering, 1984
■ Stevens Institute of Technology, M.S., Electrical Engineering, 1986
■ Peninsula University, J.D., 1992
PRIOR LAW FIRMS
■ Silicon Valley-Based IP Boutique of Ipxlaw Group LLP
■ Oppenheimer Wolff & Donnelly LLP (acquired by Fox Rothschild)
■ Bronson, Bronson & McKinnon
■ Cirrus Logic, Inc.
■ Applied Signal Technology, Inc. (acquired by Raytheon Company)
■ GTE Government Systems
■ Singer Kearfott Division (acquired by Astronautics Corporation of America)
BAR & COURT ADMISSIONS
■ Admitted to practice law before the Supreme Court of California
■ Admitted to practice law before the Northern District, Eastern District, and Central District of California
■ Registered Patent Attorney before the U.S. Patent and Trademark Office