Susan Barbieri Montgomery
Susan Montgomery focuses on intellectual property assets and related strategic planning, exploitation and protection. She counsels U.S. and foreign companies on the intellectual property aspects of their domestic and international business transactions, including acquisitions, alliances and joint ventures. Susan assists clients with substantial cross-border planning for protection and exploitation of IP assets, including advising US, Canadian, European, Asia/Pacific and multi-national companies on the purchase, sale and license of IP assets around the world. She also advises lenders and borrowers on IP asset collateral and financing transactions.
Susan’s transactional work also encompasses software and technology development, and other domestic and international license, franchise and distribution arrangements. She counsels clients on strategies for conducting business on the Internet and use of online content.
In 2008, Susan joined the faculties of Northeastern University's College of Business Administration and School of Law.
Since 1986, Susan has assisted clients with selection, registration and enforcement of rights in trademarks in over 200 jurisdictions around the world. Her work includes advising clients on advertising, packaging and trade practices compliance, and the establishment of domestic and international licensing and maintenance programs.
Before joining Foley Hoag, Susan clerked for Justice J. Harold Flannery at the Superior Court of Massachusetts.
Bars and Court Admissions
- Massachusetts
- U.S. District Court for the District of Massachusetts
- U.S. Court of Appeals, District of Columbia Circuit
Representative Experience
The following is a brief summary of Susan's experience and accomplishments:
- Testified on behalf of the ABA before the Judiciary Committee of the U.S. House of Representatives
- Represents foreign companies acquiring or selling assets and subsidiaries in the United States, including representation of a Belgium company purchasing the assets of a bankrupt U.S. licensee, an Australian company establishing U.S. operations with several acquisitions, and a British software company selling its U.S. business operations
- Advised a consumer products client on strategies for segregating, migrating and evaluating worldwide intellectual property assets in anticipation of spinning off portions of its business
- Represented a multinational client in its worldwide corporate reorganization and the strategic restructuring and consolidation of the client’s intellectual property holdings, and continues to advise the client on use of IP in its worldwide operations, including assignments and protective licensing of patents, trademarks and know-how in over 200 countries throughout the world
professional / civic involvement
- Intellectual Property Law Section of the ABA, Section Chair; past service as an Officer and Council Member
- ALI, Principles of Software Contract Law, Advisor
- Suffolk University Law School, Adjunct Professor
- Franklin Pierce Law School Advisory Council on Intellectual Property, Member
- ALI-ABA Advisor on Intellectual Property to the Program Committee
- American Bar Foundation, Fellow
- Lex Mundi, Intellectual Property Practice Group, Past Chair
- Board of Trustees, Volunteer Lawyers for the Arts of Massachusetts, Inc., Past Member
- Board of Directors, International Trademark Association, Member
- INTA Publishing Boards, Past
- Chair
- ABA
- Business Law and IPL Section Joint Task Force on Security Interests in Intellectual Property, Co-Chair
- ABA President’s Task Force on UCITA, Member
-
Delegate, ABA House of Delegates
-
Trustee, Rhode Island School of Design (RISD) Boards of Trustees
SPEECHES AND CONFERENCES
- Moderator, Members Forum on Business Method Patents, ABA Annual Meeting, 2007
- Moderator, A Historical Perspective on How the Trademark Dilution Revision Act Came to Be and the Effect It Has Had and/or Will Have on the Courts, AIPLA Conference, 2007
- Speaker, Choosing the Global Brand, INTA International Strategies Forum, 2006
- Speaker, Rights and Rewards of Intellectual Property, Innovation Imperative Forum, University of Cincinnati, 2006
- Speaker, Article 9 of the Uniform Commercial Code, ALI-ABA Annual Panel, 1999-2007
- Speaker, International Harmonization of Trademark Registration Systems, INTA, Amsterdam, Netherlands, May 2003
- Speaker, Managing Your Company’s Intellectual Property Assets, NECCA, Waltham, MA, December 4, 2002
- Speaker, Drafting Internet Agreements and Licenses, INTA Annual Meeting, Washington, DC, May 21, 2002
- Co-Chair, Trademarks in Business Transactions Forum, INTA, New York, New York, February 25-26, 2002
publications
- WORLDWIDE TRADEMARK TRANSFERS LAW & PRACTICE (Clark Boardman Callaghan/INTA) (1992-2007) Co-Edited with Richard J. Taylor
- “IP Bad Guys and Good Guys,” “The Voice of the ABA,” “The Certainty Imperative for Patent Law Reform,” and “Doing What is Right: Solving the Problem of Counterfeiting and Piracy” CHAIR’S COLUMN: IPL NEWSLETTER (2006-2007)
- Benefits of Timely Copyright Registration, INTERNATIONAL BAR ASSOCIATION COMMITTEE L NEWS (April 2003) Cc-Authored with John L. Welch and Thomas M.S. Hemnes
- Trademarks and Hyperlinks: Implied Rights and Express Agreements, WORLD E-COMMERCE & IP REPORT (September 2002)
- Intellectual Property Transfers - Holding Companies (chapter), INTELLECTUAL PROPERTY ASSETS IN MERGERS AND ACQUISITIONS (John Wiley & Sons, Inc.) (2002) Co-Authored with Leonard Schneidman
- Security Interests in Intellectual Property, ALI-ABA BUSINESS LAW JOURNAL (2001)
- Commercial Technology Transactions, ABA IPL SECTION CLE (2000)
- Trademarks in Business Transactions, INTA FORUM (1999)
- Authorship and Ownership of Copyrights, LORMAN (1999)
- IP Collateral: an emerging financing tool, MANAGING INTELLECTUAL PROPERTY (September 1999) Co-Authored with Carmen Eggleston
- Intellectual Property in the Internet Era, NECCA (1998)
- Off the Mark: Talking Tax in a Trademark World, TRADEMARK WORLD (May/June 1998) Co-Authored with Leonard Schneidman and Audrey Nacamuli
- UCC 2B Could Result in Ambiguous Intellectual Property Rights, THE NATIONAL LAW JOURNAL (May 18, 1998) Co-Authored with Robin Maisashvili
- Security Interests in IP and Proposed Amendments to the Copyright Act, Patent Act and Lanham Act and UCC Article 2B, ABA IPL SECTION, CLE (1997)
- UCC Article 2B: A Guide for the Uninitiated, SECOND ANNUAL SUFFOLK UNIVERSITY LAW SCHOOL HIGH TECHNOLOGY CONFERENCE (1997)
- Hot Intellectual Property Issues for Marketers: How to Use the Internet When the Law is Unsettled, INTERNET MARKETING ASSOCIATION (1996)
- Security Interests in Intellectual Property, ALI-ABA (2000-2007); MCLE (1995)
- Trademark Rights, Registration and Licensing for Artists, MCLE (1993)
- The Bankruptcy Code, The Copyright Act, and Transactions in Computer Software, 7 COMPUTER/LAW JOURNAL (1987) Co-Authored with Thomas M.S. Hemnes