John J Cotter

Practice Areas

John Cotter leads patent, complex intellectual property, and commercial cases at trials and on appeals. He has tried patent, trademark, and other IP cases; argued Markman, TRO, preliminary injunction, and summary judgment hearings; argued appeals at the Federal, First, and Eleventh US Circuits and the Massachusetts Appeals Court; handled inter partes disputes at the US Patent and Trademark Office; and has taken US and overseas arbitrations to judgment.

John's patent cases have involved agricultural and industrial chemicals and biologicals; pharmaceuticals; electronic and optical switching technology; wireless and mobile communications; medical ventilators and blood analyzers; diagnostic medical tests; software and computer systems for web services, FDA clinical trials, medical records, and security; and surgical devices. He advises clients on IP strategy, rights ownership, indemnification, license agreements, and license enforcement programs; internal investigations involving technology and trade secrets; Hatch-Waxman/ANDA patent litigation; exemptions from infringement; and coordinated global litigation strategies.

John's trademark litigation experience spans from internationally famous to regional and niche brands, for consumer and industrial products, pharmaceuticals, and medical instruments. In the copyright, licensing, trade secrets, and internet areas, John has litigated the leading case on internet trespass; a pro bono artists' and musicians' rights lawsuit resulting in rescinding unconstitutional regulations; entertainment and patent royalty disputes; non-competition restrictions and software copyright cases including under the Digital Millennium Copyright Act.

His pro bono work includes trying cases for political asylum seekers in immigration court and assisting victims of cyber harassment.

Professional Memberships

American Intellectual Property Law Association

Boston Bar Association

Federal Circuit Bar Association

Intellectual Property Owners Association

International Trademark Association

New York Intellectual Property Law Association

Publications

“Court decisions limit reach of certain method patents,” Boston Business Journal, September 2008

“The Inequitable Conduct Defense: Still a Real Issue,” The International Chamber of Commerce, United Kingdom Members Handbook, Cyworks, 2004.

“U.S. Patent Appeals Court Marks 20th Anniversary,” The Lawyers Weekly (Canada), November 29, 2002.

“New Protection for Databases - When?,” Intellectual Property Observer, Winter 2002.

“Unwanted Access: Online Trespass and Other Contact,” ABA’s National Cybercrime Conference Course Handbook, 2002.

“Avoid Negotiating Your Company Into an IP Lawsuit,” Intellectual Property Observer, Summer 2001.

“Using and Misusing Third Party Resources,” Practicing Law Institute’s Fifth Annual Internet Law Institute Course Handbook, 2001.

“Supreme Court Decides ‘On Sale’ Patent Case,” Venture Update, Summer 1999.

Education