The Collected Works of Karl F. Jorda - Curriculum Vitae

Karl F. Jorda

  1. Immigrated to the United States on a scholarship in 1951 - as a Sudeten German/Austrian - after graduating from a German "Gymnasium" with honors in 1950 and after attending the "Johann-Wolfgang-Goethe University" in Frankfurt, Germany for three semesters.
  2. Academic and Honorary Degrees:
  3. Bachelor of Arts (B.A.) Liberal Arts and Sciences, University of Great Falls, Montana, 1953 (Summa Cum Laude).

    Master of Arts (M.A.) Chemistry, University of Notre Dame Graduate School, Indiana, 1954.

    Juris Doctor (J.D.), University of Notre Dame Law School, Indiana, 1957. (Senior Class Representative, Law Review Articles Editor, Moot Court Semi-finalist).

    Honorary Degree of Doctor of Laws, Franklin Pierce Law Center, (Pierce Law), Concord, NH, 2009.

  4. Positions:
  5. Law Clerk, Illinois Appellate Court (Judge Kiley), Chicago, Illinois, 1957-1958.

    Patent and Trademark Attorney, Miles Laboratories, Elkhart, Indiana, 1958-1960 (now Bayer).

    Patent Attorney, 1960-1963, and Chief IP Counsel and Director of the IP Department, "Level 3 Executive," 1963-1989, CIBA-GEIGY Corporation, Ardsley, New York (now Novartis, Syngenta, Ciba Specialty Chemicals and others).

    Professor of Intellectual Property Law and Industrial Innovation, Director, Kenneth J. Germeshausen Center for the Law of Innovation and Entrepreneurship and Editor, Germeshausen Center Newsletter, Pierce Law, Concord, New Hampshire, 1989-2009. (Courses: Technology Licensing, Intellectual Property Management, Intellectual Property Moot Court, Advanced Trade Secret Law and Practice; also has conducted an annual one-week Advanced Licensing Institute in July and an annual two-day PCT Seminar in April as well as other conferences and seminars.)

    Lecturer on "IP Management and Technology Licensing" in the China Intellectual Property Summer Institute (CHIPSI) of Pierce Law and Tsinghua University School of Law in Xian in July 2007.

    Co-Director of a Joint Degree Program in Intellectual Property Law between Pierce Law and the Gulf Institute for International Law (GIIL), Dubai, United Arab Emirates; also taught courses on Patents and Trade Secrets, International Intellectual Property Law and Intellectual Property Licensing/Technology Transfer twice a year in Dubai in this Program, 1997- 1999. (N.B. In the U.S News & World Report's rankings of Americas' Best Graduate Schools, which started in 1992, Pierce Law always placed among the top seven law schools in the Intellectual Property Law Specialty and in 1997, 1998 and 1999 Pierce Law was number one.)

    Adjunct Professor, The Fletcher School of Law & Diplomacy, Tufts University, Medford, Massachusetts, 1995-2003. (Course: International Intellectual Property Law.)

    Of Counsel to Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Boston, Massachusetts, 2000 and 2001.

  6. Bar, Patent Office and Court Admissions and Certifications:
  7. Illinois, Indiana and New York Bars

    U.S. (No. 19704) and Canadian (No. 10419) Patent and Trademark Offices

    Court of Appeals for the Federal Circuit and U.S. Supreme Court.

    Certified Licensing Professional (CLP) No. 1167, "Inaugural Class," Licensing Executives Society (LES), 2008.

  8. Association Positions and Memberships Highlights:
  9. Member of the Intellectual Property Hall of Fame Academy (London) as inductee into the global Intellectual Property Hall of Fame in 2007.

    Past President:

    Pacific Intellectual Property Association (PIPA)

    New York Intellectual Property Law Association (NYIPLA)

    Past Member: of Board of Directors, Council or Executive Committee -

    American Bar Association's Intellectual Property Law Section (ABA-IPL Section)

    American Intellectual Property Law Association (AIPLA)

    Association of Corporate Patent Counsel (ACPC)

    Intellectual Property Owners, Inc. (IPO)

    International Association for the Protection of Industrial Property (AIPPI United States)

    International Trademark Association (INTA)

    In greater detail:

    PIPA: Chairman of Committee I - Patent and Trademark Law and Practice, 1977-1980; Second Governor, 1980-1981; First Governor, 1981-1983; International President, 1983-1984; President of U.S. Group, 1984-1985; Ex Officio Member, Board of Directors, 1985-1989; Honorary Life Member as 1989 PIPA Medalist.

    NYIPLA: Member, Board of Directors, 1980-1983; Second Vice-President, 1983-1985; President-Elect, 1985-1986; President, 1986-1987; Immediate Past-President, 1987-1988; Honorary Life Member, since 2002.

    AIPLA: Chairman of Chemical Practice Committee, 1977-1979; Guest Editor, AIPLA Quarterly Journal, 1979; Member, Board of Directors, 1979-1982; Life Member, since 2003.

    ABA-IPL Section: Chairman of Committee 106 - Inventors, 1973-1975; Chairman of Committee 409 - Restrictive Trade Practices Abroad, 1978-1980; Chairman of Committee 206 - Trade Secrets, 1980-1981; Member, Council, 1981-1985; Chairman of Long-Range Planning Committee, 1985-1987; Chairman of Relations with Other Bar Groups, 1987-1988; Honorary Council Member, since 1989.

    IPO: Member, Board of Directors, 1985-1989.

    INTA: Member, Board of Directors, 1989-1992.

    AIPPI: Chairman of Committee on Working Question 53-Know-how, 1982-1985 and chaired a Plenary Session at the 1983 Paris Congress on Question 53; Member, Executive Committee of American Group, 1983-1998.

    ACPC: Member, 1966-1989 (longest tenure as active member); Executive Committee, 1974-1975; Active Emeritus Member, since 1989.

    Licensing Executives Society (LES): Chairman, Latin American Committee, 1981-1984; Chairman, Education Committee, 1991-1995; Member, Endowment Committee, 1993-1997.

    Licensing Executives Society International (LESI): Education Committee -Co-Chairman, 1996-97; Chairman, 1997-1999.

    Inter-American Bar Association (IABA): Chairman of Intellectual Property Committee, 1986-1997.

    International Law Association (ILA) - American Branch: Chairman of Intellectual Property Committee, 1995-2003.

    Member: Canadian Patent and Trademark Institute (PTIC); Asia-Pacific Lawyers Association (APLA); Inter-American Industrial Property Association (ASIPI); Boston Patent Law Association (BPLA); International Intellectual Property Society (IIPS), New York City; German Association for Industrial Property and Copyright (GRUR) and International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP).

    Member for three or more years of the Patent Committees of the National Agricultural Chemical Association (NACA), Pharmaceutical Research & Manufacturers of America (PhRMA) and Chemical Manufacturers' Association (CMA), in the '80's.

  10. Professional Activities:
  11. U.S. Representative to the Confidentiality Commission (Commission on the Settlement of Disputes Relating to Confidentiality) of the Organization for the Prohibition of Chemical Weapons (OPCW), the implementing body of the Chemical Weapons Convention (CWC), located in The Hague, Holland, 1999-2005.

    Consultant for six-week period in 1990 under International Executive Service Corps (IESC) auspices to Directorate General of Copyrights, Patents and Trademarks, Department of Justice (Tangerang, Indonesia) in the matter of the implementation of their new patent law.

    Coordinator of annual two-week WIPO Academy (English Session) in Geneva for developing country government officials in October 1993 and June 1994 and lecturer at WIPO Academy in June 1995 and October 2000.

    Consultant under WIPO auspices in August 1991 to the National and World Economy University and the Institute of Inventions and Rationalizations in Sofia, Bulgaria in the matter of setting up graduate Intellectual Property teaching programs.

    Participant since 1990 in WIPO Symposia in Ulan Bator, Mongolia; Daeduk, Korea; Jakarta, Medan and Ujung Pandang, Indonesia; Delhi, India; Gramado, Brazil; Caracas, Venezuela; Bogota, Colombia; Quito, Ecuador; Kuala Lumpur, Malaysia; Trinidad; Barbados.

    Participant in WIPO/UNITAR Workshops for UN diplomats in New York in 1999, 2002, 2003, 2004, 2006, 2007 and 2008.

    Participant in a UN-TNC Symposium in Moscow on Joint Ventures in 1990.

    Participant under USIA's "U.S. Speaker Program" and USAID auspices in IPR Seminars, Workshops and Congresses in Nicaragua (twice), Guatemala, Costa Rica, Brazil, Honduras (Tegucigalpa and San Pedro Sula), El Salvador and Panama in 1995, in Pakistan (Islamabad, Lahore and Karachi) in 1997 and Madagascar in 1998.

    Head of delegation of U.S. Patent Counsels at three biennial JPO Meetings in Tokyo from 1984 to 1990.

    Visiting Scholar at Max-Planck Institute for Foreign and International Patent, Copyright and Competition Law in Munich for six weeks in 1991 and for four weeks in 1992.

    Observer for PIPA and NYIPLA at several WIPO Paris Convention Revision and Patent Law Harmonization Meetings in Nairobi and Geneva in the '80'ies.

    Testified in Senate at Senator Rockefeller Hearings in 1989 and at GAO in 1992 on the Japanese Intellectual Property System, at the Patent Law Reform Advisory Commission of the Commerce Department in 1992, in the House of Representatives in 1995 on Prior User Rights and at the FTC/DOJ Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy in Washington in 2002 as well as several times at the U.S. Patent and Trademark Office.

    Co-promoter (thesis advisor and examiner on the subject of trade secrets) of a Doctoral Candidate in the "Pre-promotion Exam" in November 1998 and the Final Exam and Promotion in March 1999, at the University of Indonesia in Jakarta and thesis examiner of a Doctoral Candidate at the University of Adelaide, Australia.

    Member of U.S. Patent and Trademark Office Exam Board for Registration, 1989-1993.

    Member of Advisory Boards or Councils of Intellectual Property Management Institute, National Patent Board, West Patent Bar Review, Actas de Derecho Industrial, Licensing Economics Review, The Licensing Journal, Intellectual Property Councelor and IDEA, The Journal of Law and Technology.

    Expert Witness in Litigation in Federal and State Courts on Patent Validity/Infringement and Licensing issues.

    Consultant to American and foreign corporations advising on IP management, IP licensing and IP litigation, preparing IP strategic plans, holding IP seminars.

  12. Medals and Awards
  13. Recipient of the New York Intellectual Property Law Association's "2009 Intellectual Property Law Educator Award." (First recipient)

    Inductee into the global Intellectual Property Hall of Fame in 2007 for "an outstanding contribution to the development of intellectual property law and practice, thereby helping to establish intellectual property as one of the key business assets of the 21st century," which includes membership in the Intellectual Property Hall of Fame Academy (London).

    Recipient of the 1996 Jefferson Medal of the New Jersey Intellectual Property Law Association - "the United States' highest honor in intellectual property" - for "extraordinary contributions to the U.S. intellectual property law system." Click here for Citation.

    Recipient of the 1998 Distinguished Alumni Award of the University of Great Falls and Commencement Speaker.

    Recipient of the 1989 PIPA Medal for "Outstanding Contributions to International Cooperation in the Intellectual Property Field".

  14. Recognition and Citations
  15. Honoree by the establishment in 2009 of The Karl F. Jorda Professorship in Patent Law at Franklin Pierce Law Center.

    Appointee to an endowed professorial chair at Pierce Law in 1989 as David Rines Professor of Intellectual Property Law and Industrial Innovation and as Director of the Kenneth Germeshausen Center for the Law of Innovation and Entrepreneurship.

    Recipient of an employment contract at Pierce Law in 2007 at age 78 "to continue as Rines Professor of Law and Director of the Germeshausen Center for the rest of (my) life."

    Invitee as one of several "famous professors and experts in international IP society" to author an article for the "Learned Papers on Intellectual Property" publication in celebration of the Korean Intellectual Property Office 30th Anniversary. This article is entitled "Intellectual Property Protection Policies & Strategies: Synergistic Integration of Patents and Trade Secrets" and it appeared as the second contribution.

    Invitee as "an internationally respected scholar of intellectual property law" to deliver the "2008 Foulston Siefkin Lecture" at the Washburn University School of Law in Topeka, KS on February 29, 2008, subsequently published in the Washburn Law Journal (Volume 48, No. 1, Fall 2008).

    Recipient of Pierce Law Citation for, inter alia, "freely sharing his expertise in protecting, transferring, and enforcing intellectual property rights around the globe, and masterfully teaching students from many countries the art and skill of licensing and managing intellectual property" (1995). See Pierce Law Citation.

    Appointee to the Board of Trustees of the University of Great Falls (2001) and as Trustee Emeritus (2006) and lead-off "Honored Speaker" at the 75th Anniversary Gala of the University of Great Falls in 2007.

    Recipient of a PIPA Citation for "Dynamic Leadership as President" and "Guidance on Industrial Property Matters" (1985).

    Recipient of a NYIPLA Citation for "Leadership and Dedicated Service" (1987).

    Recipient of Life Membership in BPLA (1999).

    Recipient of Life Membership in NYIPLA for "years of distinguished service to the profession" (2002).

    Recipient of Life Membership in AIPLA (2003).

  16. Lectures and Publications
  17. Gave 315 talks on Intellectual Property and Technology Licensing subjects in English (269), Spanish (38) and German (8) in the following 43 countries: Argentina, Austria, Barbados, Brazil, Bulgaria, Canada, Chile, China, Colombia, Costa Rica, Ecuador, El Salvador, England, Germany, Guatemala, Honduras, Hungary, India, Indonesia, Japan, Jordan, Malaysia, Mexico, Nicaragua, Pakistan, Panama, Peru, Philippines, Puerto Rico, Russia, Singapore, Slovenia, South Korea, Spain, Sweden, Switzerland, Thailand, Trinidad, United Arab Emirates, United States and Venezuela - and even Madagascar and Mongolia, which the New York Times called "countries at the end of the world."

    At least 30 of the 300+ lectures were published in such Intellectual Property and Licensing/Technology Transfer journals, conference proceedings and other publications as JPTOS, PLI Handbooks, AIPLA Quarterly Journal, NYIPLA Bulletin, LES Nouvelles, Advanced Topics in IP-Mass. CLE, CIPA (British), PTIC (Canadian), GRUR (German), PIPA Presentations and PIPA Newsletters, Derechos Intelectuales (Buenos Aires), Actas de Derecho Industrial y Derecho de Autor (Spain), ABPI Anais (Brazil).

    (Click for PDF outlining Major Speeches)

  18. Additional publications:
  19. Article on "Drafting the License - Payment Clause" in World Licensing Report, Vol. 1, No. 2, February 1999.

    Chapter entitled "La Propiedad Intellectual: Reflexiones Sobre Su Naturaleza e Importancia" in Actas de Derecho Industrial y Derecho de Autor, Vol XX, 1999, published by the IP Institute, Santiago University, Spain.

    Chapter 8 of Part 2 on "Licensing and Franchising" in the anthology Propiedad Intellectual - Temas Relevantes en el Escenario Internacional, edited by Marco Antonio Palacios and published by SIECA-USAID, in Guatemala in 2000.

    Chapter entitled "Derechos de Propiedad Intellectual - Reflexiones Sobre Su Naturaleza e Importancia" in a book on Patentes en la Comunidad Andina, published by CORPIC, Venezuela (based on my talk in a CORPIC seminar held in Quito, Ecuador in 2001).

    Lead Article on "Patents and Trade Secrets: A Happy Marriage" in the 40th Anniversary publication of Barbat & Cikato, Montevideo, Uruguay in 2002.

    Lead article entitled "Color Me Confused, Confounded" in 38 Les Nouvelles 53 (June 2003), based on my talk "Technology Transfer and Valuation" at the 2002 Seoul International IP Conference of LES-Korea/AIPPI-Korea (co-sponsored by LESI).

    "Commentary: the Thirty-Year Laser Patent War," 43 IDEA: The Journal of Law and Technology 545 (2003)

    Chapter entitled "Harvesting New Intellectual Assets: The Role of Business Method Patents and Trade Secrets in Strategic IP Management" in the book "Innovate or Perish," coauthored with Wayne Jaeschke. (Edward Kahn, Wiley, 2007).

    Chapter entitled "Trade Secrets and Trade Secret Licensing" in the MIHR/PIPRA "Handbook of Best Practices for Management of Intellectual Property in Health and Agriculture" for developing countries (2007).

    Chapter entitled "Intellectual Property Protection Policies and Strategies: Synergistic Integration of Patents and Trade Secrets" in KIPO's 30th Anniversary Publication (2007).

    Lead article entitled "Patent/Trade Secret Complementariness: An Unsuspected Synergy" in the Washburn Law Journal Fall 2008 Volume 48, No. 1.

    Chapter entitled "Intellectual Property Management in Industrial Innovation" in a Wiley "Handbook of Technology Management" (2009).

    "From the Editor" columns in the Germeshausen Center Newsletter, published in the following issues:

    • Summer 1998 (Spreading the Gospel of Intellectual Property Rights)
    • Winter 1998 (Patents and Monopolies)
    • Spring 1999 (The Patent/Trade Secret Interface)
    • Fall 1999 (The Patent/Trade Secret Interface II)
    • Winter 2000 (Patent Term Restoration Legislation)
    • Fall 2000 (Credos - Insights - Truisms about Intellectual Property Rights and Technology Transfer)
    • Spring 2001 (The Chemical Weapons Convention and Trade Secrets)
    • Summer/Early Fall 2001 (The Irrational Disparity between the Patent and Copyright Terms)
    • Winter 2002 (The Thirty-Year Laser Patent War)
    • Summer 2002 (Color Me Confused, Confounded)
    • Winter 2003 (A New IP Academy in Singapore)
    • Winter/Spring 2004 (The Best Mode Requirement: What is Fact - What is Fiction)
    • Summer/Fall 2004 (The "Differences" Between Patents and Trade Secrets)
    • Winter/Spring 2005 (Color Me Confused, Confounded - Revisited)
    • Summer/Fall 2006 (Patents Come and Go - Trade Secrets are Forever)
    • Winter/Spring 2007 (Utility Models: the Panacea for our Broken Patent System)
    • Summer/Fall 2007 (Book Review: Trade Secret Asset Management)
    • Summer/Fall 2008 (Federalizing Trade Secret Law: A Cause Whose Time Has Come)

  21. Some extraneous but interesting factoids:
  22. Flew more than 4.2 million air miles
  23. Visited more than 70 countries
  24. Flew over the Atlantic over 270 times
  25. Flew over the Pacific 56 times
  26. Made 19 "RTW" ('Round the World) trips since 1998



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