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IP + Technology Law
Ian W. Gillies - Partner -San Diego

Ian W. Gillies

Partner
San Diego
[email protected]
858-707-4000
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Overview

Ian Gillies advises on the procurement, management and development of patents, trademarks and copyrights for clients that range from private individuals and start-ups to large corporations. Valued for his meticulous work product and thorough analysis in identifying and resolving complex problems, Ian consistently delivers immediate likability, honed consensus building skill and a seemingly innate talent for adapting to the many audiences and viewpoints for any given matter.

A conscientious communicator and dedicated service provider, Ian protects his clients’ assets across a spectrum of transactional IP areas, and not just a single, specialized point of interest. Clients appreciate Ian’s widespread industry know-how and that he is equally well-versed in advising on patents and trademarks alike.

Ian also advises on due diligence initiatives related to IP searches, availability, acquisitions, and infringement risk. He represents clients before the U.S. Patent and Trademark Office (USPTO) and the corresponding patent and trademark appeal boards. He counsels clients on offensive and defensive IP strategies and trade secret tactics. In addition, Ian advises on the IP aspects of NDAs, material transfer agreements, assignments, and other legal instruments. He has successfully navigated the resolution of challenging IP disputes between his clients and third parties to avoid litigation or other adverse proceedings before patent and trademark boards.

Prior to his legal career, Ian worked as a mechanical engineer, inventor, and professional musician. For many years, Ian was employed as an engineer for Novellus Systems, Kimberly Clark, and General Dynamics, and as a technical salesperson for SMC. Moreover, Ian composed and performed extensively as a musician and opened for recording artists such as Pink, The Psychedelic Furs, The Lemonheads, and Air Supply.

Notably, Ian is an inventor himself and holds U.S. Pat. No. 6,648,869, as well as the author of a series of copyrights stemming from several professionally produced records. Ian’s hands-on business and entertainment experience allow him to bring a unique perspective to advocacy and a more balanced approach to representing similarly-minded creative and inventive entities.

Extern Experience

Extern for the Office of General Counsel at Arizona State University (2007)

Education

  • Arizona State University - Sandra Day O'Connor College of Law (J.D., 2008), Certificate in Law, Science, and Technology with Specialization in Intellectual Property, Articles Editor, Jurimetrics: Journal of Law, Science, and Technology, Willard H. Pedrick Scholar
  • Rensselaer Polytechnic Institute (B.S. Mechanical Engineering, 1993), Pi Tau Sigma, Mechanical Engineering Honor Society
  • Rensselaer Polytechnic Institute (Graduate Coursework in Business Administration)

Bar Admissions

  • State Bar of California
  • U.S. Patent and Trademark Office

Recognition

Awards & Honors

  • Jurimetrics Journal Award for Best Case Comment
  • Center Scholar: Center for Law, Science, and Technology
  • Corporate and Business Law Society Scholarship

News & Insights

Articles

Latest Updates and News

Publications
Dec 2023
USPTO Semiconductor Technology Pilot Program
USPTO Announces New, Limited-Time Program for Expedited Semiconductor Patent Applications On December 1, 2023, the United States Patent and Trademark Office (“USPTO”) began accepting petitions for the Semiconductor Technology Pilot...
Blog - Fashion & Beauty
Oct 2020
Second Chances From the Second Circuit: Tiffany’s $21m Judgment Is Overturned and Remanded Back to the SDNY
The U.S. Court of Appeals in the Second Circuit found in favor of Costco in the latest chapter of an over seven-year legal battle between Tiffany and Co. (“Tiffany’s”) and Costco Wholesale Corporation (“Costco”). A three judge panel overturned the $21 million award granted to Tiffany’s, after a summary judgment decision in Tiffany’s favor in the U.S. District Court for the Southern District of New York (“SDNY”). In a unanimous decision, the court concluded that the SDNY improperly granted Tiffany’s motion for summary judgment, which prevented a jury from deciding key issues of fact. Thus, the SDNY decision was vacated and the case remanded for trial.
Blog - Fashion & Beauty
May 2020
The FTC: Influencing the Future of the Influencers
With social media popularity comes more followers. With more followers comes opportunities to market products online. But as the wellness-company Teami discovered, with online marketing comes increased FTC scrutiny.
Blog - Fashion & Beauty
Nov 2019
Trademarks Require “Use in Commerce” – But What If You Need Regulatory Approval Before Selling Your Product?
The U.S. Patent and Trademark Office (USPTO) allows for a trademark application to be filed on an "Intent to Use" basis to establish a priority date before the mark is actually "used in commerce." However, such use in commerce must happen before the trademark application will register with the USPTO. If your company markets pharmaceutical cosmetics, beauty devices, or other fashion related goods or services that require regulatory approval, the use in commerce requirement presents unique issues.
News
Jul 2019
Partner Ian Gillies was quoted in “Jury: Katy Perry’s ‘Dark Horse’ Copied Christian Rap Song (3),” an article published by Bloomberg Law.
Partner Ian Gillies was quoted in “Jury: Katy Perry’s ‘Dark Horse’ Copied Christian Rap Song (3),” an article published by Bloomberg Law. Excerpt: Katy Perry’s 2013 hit “Dark Horse” infringed a Christian...
Blog - Fashion & Beauty
Feb 2019
No Apologies: Nirvana v. Marc Jacobs
On December 28, 2018, Nirvana LLC filed a lawsuit against designer Marc Jacobs in the Central District of California, alleging copyright and trademark infringement. Nirvana LLC is the legal entity which controls the band Nirvana’s financial, legal, and business affairs.  Nirvana LLC was formed in September 1997 by the band’s two surviving members, Dave Grohl and Krist Novoselic, along with the Cobain Estate, controlled by Courtney Love. The lawsuit was triggered by Jacobs’ new “Bootleg Redux Grunge” Collection, and alleges infringement of Nirvana’s satirical smiley face design, created by Nirvana front man Kurt Cobain in 1991. The design was first introduced in 1992, and has since been licensed for use on numerous items, often appearing in yellow against a black background.