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Charles E. Miller

Dispute Resolution Section
Committee on ADR Within Government Agencies
Co-Chair

Charles E. Miller joined Dickstein Shapiro in March 2003, as a partner in the Intellectual Property Practice. He has doctorate degrees in both chemistry and law and practices primarily patent law in the Firm’s New York office.

At Dickstein Shapiro, Dr. Miller continues his practice in counseling clients mainly in the chemical and pharmaceutical industries, managing their intellectual property portfolios, and representing their interests extensively in technology-related litigation, proceedings before the U.S. Patent and Trademark Office, alternative dispute resolution, and licensing.

PROFESSIONAL BACKGROUND 

Prior to joining Dickstein Shapiro, Dr. Miller was a partner at Pennie & Edmonds LLP, where he practiced intellectual property law beginning in 1971. In that firm’s governance, he served on the executive, membership/partner compensation, recruitment, and practice development committees. Before that, from 1966 to 1971, he worked in the law departments of Allied Chemical Corporation (now Honeywell International, Inc.) and of Celanese Corporation, where he was involved in patenting the companies’ inventions.

PROFESSIONAL ACTIVITIES

Dr. Miller has been licensed to practice before the U.S. Patent and Trademark Office in patent cases since 1967; he is admitted to practice in New York State (1971) and before the the U.S. District Courts for the Southern (1973), Eastern (1973), Northern (2001), and Western (2001) Districts of New York; the U.S. Court of Appeals for the Second (1973), Fourth (1978), and Federal (1982) circuits; the Court of Federal Claims (1982); and the U.S. Supreme Court (1980).

Dr. Miller is a member of the American Bar Association and the New York State Bar Association, the New York Intellectual Property Law Association and the American Intellectual Property Law Association, the Association of the Bar of the City of New York, the Federal Bar Council, the Licensing Executives Society, the International Association for the Protection of Intellectual Property, the American Section of the Société de Chimie Industrielle (member, board of directors, 1996-2008), the American Chemical Society, and the Japanese Chamber of Commerce and Industry of New York.

As a practitioner, Dr. Miller also has been a commercial arbitrator for the American Arbitration Association and for the World Intellectual Property Organization. He has testified in patent and antitrust cases as an expert on patent litigation and U.S. Patent and Trademark Office practice and procedure, and has served as special master in patent infringement litigation on appointment by the U.S. District Court.

PUBLICATIONS

• Author, “Some Views on the Law of Patent Infringement by Inducement,” 53 J. Pat. Off. Soc’y 87-161 (February-March, 1971; received 1971 Watson Award of the American Patent Law Association)
• Author, “Recent Developments Regarding the Awarding of Multiple Damages and Attorney Fees in Patent Cases,” 27 Idea 227 (1987)
• Author, “Executive Order Allows PTO Action Arbitration,” National Law Journal, January 27, 1997
• Editor, Random Reminiscence of Sixty Years of Law Practice – The Memoir of Dean Stockett Edmonds (Rutledge Books, Inc. 2000)
• Author, “New Procedural Rights for IP Owners and the Promotion of Judicial Economy and Efficiency through the use of Arbitration in Civil Actions against the USPTO,” IPO Daily News (September 24, 2007)
• Co-author, “A “Best Practice” ADR Strategy in IP Litigation: The Separate but Complementary Roles of Settlement Counsel and Trial Counsel,” New York State Bar Association (Fall 2008)
• Author, “Negative Consequences of Patent Reform Amendment,” New York Law Journal (June 18, 2010)

EDUCATION

Dr. Miller received his A.B. degree in chemistry from Columbia College (1963), and his M.S. (1964) and Ph.D. (1966) degrees in organic chemistry from Columbia University, where he worked on the synthesis of tetracycline antibiotics. He received his J.D. from New York University School of Law (1970).