Samuel W. Apicelli

is co-chair of Duane Morris' Patent Preparation and Prosecution division. He concentrates his practice in all aspects of patent, trademark and copyright procurement and enforcement.

“PeroxyChem LLC has been working with Samuel Apicelli ... at Duane Morris since March 2014. During this time, [the firm’s] representation of PeroxyChem has transcended the typical outside counsel/client relationship to become a true partnership. ... Duane Morris has helped us navigate through a myriad of ... complex patent issues, including patent litigation, inter partes reviews, M&A support, etc. Their strategic, efficient and cost-effective approach to helping us achieve our goals and solve problems truly sets them apart from other firms.”
- EVP, General Counsel and Chief Compliance Officer, PeroxyChem LLC

Mr. Apicelli provides strategic guidance to executive management on the development and commercialization of products and services and the implementation of patent strategies. On many occasions, those strategies require enforcement by court action. He assists investors in negotiations and transactions involving intellectual property, including due diligence reviews of patents and trademarks, and assists parties in mergers and acquisitions involving intellectual property of all types. He regularly performs intellectual property audits to identify or locate intellectual property assets, including patents or patentable subject matter, copyrights, trademarks, domain names and trade secrets. Mr. Apicelli is often called upon to assist in the development and sale of intellectual property rights and licensing and financing for technology for a wide variety of companies. He also prepares intellectual property opinions of counsel, responds to patent demand letters and regularly assists in the settlement of adverse claims.

In enforcement and trial matters, Mr. Apicelli often assumes a second chair position in charge of marshaling the technical and patent law aspects of a case, including interface with experts, substantive discovery oversight and active participation in the development of strategies for the case at hand. Mr. Apicelli's familiarity with the underlying technology, the patents at issue, the prior art and patent litigation strategies allows for both efficient support of lead trial counsels efforts in the court room, and cost effective implementation and management of associate lawyers and paralegal staff.

Mr. Apicelli's engineering, patent preparation and prosecution, and litigation experience includes:

Medical Industry

Mr. Apicelli's has extensive experience representing the medical device industry in a wide range of technical & medical specialties including, cardiovascular, gastrointestinal, monitoring/imaging, orthopedics, prosthetics, pulmonology, medical information technology applications, 3-D printed implants, biocompatible polymers & coatings, cardiovascular catheters & probes, diagnostics, glucose monitoring, infusion pumps, minimally invasive & endoscopic procedures, robotics, spine, stents & valves, surgical equipment, and wound care.

Manufacturing

Mr. Apicelli’s experience in the manufacturing fields includes high speed metal stamping tools and systems; polymer molding tools and systems; high speed parts assembly machines and systems; fabric and garment fabrication methods and machines; and semiconductor device packaging and interconnection.

Electronics

Interconnection technologies and the mechanical design of electronic systems for use in Wan/Lan networks, including optical and wi-fi networks, fiber optic networks, internet telephony, radio, television, wireless local area networks, and encryption technologies.

Mr. Apicelli has written and prosecuted well over 1500 patents in a variety of technical disciplines related to mechanical and electrical engineering and has been awarded three patents for his own inventions.

With respect to his trademark experience, Mr. Apicelli has prepared, filed or prosecuted over 650 trademark applications before the U.S. Patent and Trademark Office and foreign trademark offices. He provides a comprehensive service on an international basis in the areas of trademarks, unfair competition, false advertising and the Internet. Mr. Apicelli's foreign trademark practice regularly includes the creation, maintenance, and exploitation of trademarks in Europe via the European Community Trademark Office and in individual country trademark offices. Mr. Apicelli also regularly provides due diligence audits related to trademark and other IP assets in the U.S. and abroad as required for sale, acquisition and securitization of those assets. His international work experience allows him to provide unique practical advice and counsel to companies in selecting, clearing and protecting trade dress, trademarks and domain names on a global basis. Mr. Apicelli has represented many clients in all aspects of the enforcement of their intellectual property rights in U.S. federal courts and administrative agencies, such as the USPTO, as well as before administrative agencies such as the European Community Trademark Office and individual country trademark offices, with the assistance of qualified foreign counsel.

Prior to practicing law, Mr. Apicelli worked for 12 years for AMP Inc., where he was a mechanical/electrical product development engineer, an international product and development engineering manager and later Director of Engineering for Southern Europe, Latin America and Asia Pacific operations. As Director of Engineering, Mr. Apicelli was based in London where he administered and had profit and loss responsibility for numerous product and manufacturing development programs. He acted as an advisor to the international management teams for the preparation of their yearly business plans. He also was a member of the corporation's Intellectual Property Management committee. One of Mr. Apicelli's duties in Europe and Asia was to work with the AMP's tax advisors to negotiate transfer pricing, royalties, and tax holidays with foreign tax authorities that were based upon or supported by technology transfer to those countries, as substantiated by AMP's foreign patent and trademark portfolio.

Pro Bono

Mr. Apicelli regularly represents veterans in appeals before the U.S. Court of Appeals for Veterans Claims in association with the Veterans Consortium Pro Bono Program. The Veterans Consortium provides veterans and other VA claimants, who have been denied by the VA's Board of Veterans' Appeals, with free attorney representation in their appeal before the U.S. Court of Appeals for Veterans Claims.

Resume

Honors and Awards

•Listed as a Patent Star in Managing Intellectual Property's IP Stars, 2013-2020

•Listed in IAM Patent 1000: The World's Leading Patent Professionals, 2019

•Listed in Irish Legal 100 by the Irish Voice, 2009

Publications

Selected Publications

•Quoted in Trio of Alums Continue to Open Doors for UNH Law Students at Duane Morris, University of New Hampshire News, July 2, 2018

•Co-author, Taking On The Internet For Your Client's Reputation, The Legal Intelligencer, April 30, 2013
•Quoted in Counterfeiting Law Ruled Unconstitutional By Pa. Supreme Court, Andrews Litigation Reporter - Intellectual Property, October 20, 2009
•Quoted in What! EU Court Nixes Trademark for Exclamation Point, Andrews Litigation Reporter - Intellectual Property, October 20, 2009
•Co-Author, When 'Will' Won't Do In Employment Agreements, Law 360, September 22, 2008
• Strategic Alliances, Counsel to Counsel, August 1, 2008
•With other Duane Morris lawyers, Sam wrote Five Legal Issues Your Company Should Worry About (But Probably Doesn't), which appeared in the November 2006 issue of Skylights, the in-flight magazine of Spirit Airlines. Sam's section discussed patent mapping, the process of monitoring the patent portfolios of competing businesses to discern long-term trends and business strategies.
• Goose or Egg, a chapter in The Patent Leadership Conference, Top Partners on Best Practices & Winning Legal Strategies for Managing Patent Portfolios, Executive Leadership Series, ReedLogic Corporation 2006
• Of Better Mousetraps and Beaten Paths, a chapter in The Art and Science of Patent Law, Aspatore Press, Boston 2004
•Profiled in Inventing Success, Susquehanna Style Magazine, February 2002

Speaking Engagements

Selected Speaking Engagements

• What Bankruptcy Lawyers Need to Know Before Advising Clients on the Effect of Bankruptcy on IP Licenses-Understanding the Latest Legal Developments and Trends and What They Mean for Clients, ExecSense Webinar
•Moderator, Let's Not Give it Away; Patents, Trademarks, Copyrights & Intellectual Property, Innovations Partnership's Conference for Science and Technology Entrepreneurs
• The Business of Art: Copyrights, Contracts and Intellectual Property, seminar sponsored by Jump Street, Harrisburg, Pennsylvania
• Security Interests in Intellectual Property, Pennsylvania Bar Institute's Business Lawyers' Institute, Philadelphia, Pennsylvania
• Security Interests in Intellectual Property, Commercial Document Series, PBI, Philadelphia, Pennsylvania and Pittsburgh, Pennsylvania
• Strategies for Inventors and Internet/E-biz Risks, Central Pennsylvania Entrepreneur and Growth Company Day, Hershey, Pennsylvania
• Business Strategies for the Management of Innovation, 2010 ALMA Winter Gala and CLE Conference, New York City
• Intellectual Property for Small Businesses and Entrepreneurs, Murata Business Incubator, Carlisle, Pennsylvania and Kutztown Small Business Development Center, Dixon University Center, Harrisburg, Pennsylvania
• Patents, Trademarks and Copyrights, Central Pennsylvania Entrepreneurial Development Center, Harrisburg, Pennsylvania
• Patents, Trademarks and Copyrights, Pennsylvania Chamber of Commerce, E-Commerce Symposium, Harrisburg, Pennsylvania