R. Joseph Trojan
R. Joseph Trojan is a registered patent attorney and trial lawyer in Los Angeles with more than 26 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, Southern, 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.
Patent Buddy, in cooperation with the Patent Research Review, a publication of Sunlight Research, is pleased to announce America’s Top Patent Prosecutors. Out of approximately 30,000 registered patent attorneys, less than 2% were selected as Top Patent Prosecutors.
Mr. Trojan is one of 13 attorneys who were selected in all of California as Top Prosecutors in the Pharmaceutical/Biotechnology area.
Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1375 (Fed. Cir. 2017), en banc rehearing denied Dec. 6, 2017 (No. 2016- 1511), cert. denied, No. 17-1246, 2018 WL 1211219 (U.S. June 4, 2018)
Holding, among other things, that a party cannot use an expert to contradict the plain evidence in the patent record. Experts who contradict the intrinsic evidence can be ignored. Hence, Whirlpool’s patent was invalidated. U.S. Supreme Court refused to hear the case to revive the patent.
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.
1988年に、ロサンゼルスのロヨラロースクールにて JD を所得。
企業の知的財産戦略や特許, 商標 およびライセンス契約取得のほか、
特許および商標侵害訴訟において 訴訟弁護士として 原告または被告を代理しています。特許、商標、著作権やトレードシークレットに関わる訴訟・仲裁および各業種における開発契約 、製造供給契約、仲裁条項や和解契約をめぐる交渉や契約書の作成もいたします。
連邦地方裁判所カリフォルニア州中央部地区裁判所、北部地区、南部地区の各裁判所、 連邦控訴裁判所第２巡回区 、連邦控訴裁判所第９巡回区 および 連邦巡回区の各裁判所、並びに 合衆国連邦最高裁判所で 弁論を行う資格を有する。