Careers

At M&G, we dedicate ourselves to finding the best solutions to our clients’ challenges, no matter where it takes us.

Case Studies

Industries

Offices

About Merchant & Gould

Pages

People

News Room

Practices

Staff

Home - Merchant & Gould P.C.

Understanding the industries and markets in which his clients operate is a crucial part of Luciano's practice, which focuses on developing strategies for obtaining comprehensive intellectual property protection for new products and businesses.&nbsp;Luciano helps clients of all sizes to strategically grow their patent portfolios.

contentpilot/introduction

Luciano drafts&nbsp;and prosecutes domestic and foreign&nbsp;patent applications in the mechanical, electrical, computer, and software-related arts. He also prepares and prosecutes domestic and foreign industrial designs. As part of his patent prosecution practice, Luciano helps clients traverse obstacles to patenting software and business methods, such as subject matter eligibility challenges based on the United States Supreme Court’s Alice v. CLS Bank decision.

core/paragraph

In addition to patent prosecution, Luciano provides litigation support in a variety of areas, including drafting&nbsp;opinion letters regarding patentability, patent infringement, and freedom to operate.

Technologies and industries relevant to Luciano’s practice include&nbsp;medical devices, telecommunications,&nbsp;renewable energy, industrial machinery,&nbsp;consumer products, software, and e-commerce.

Luciano&nbsp;serves on the diversity committee at the firm and is a member of the Hispanic National Bar Association (HNBA). In his spare time, Luciano&nbsp;has an active lifestyle which includes hiking, running, and traveling.

Hofstra University - Maurice A. Deane School of Law, J.D., 2013, 

Pennsylvania State University, B.S. Industrial Engineering, 2009, 

Luciano Ricondo, Intellectual Property Attorney

Manufacturing

Alternative Energy

Building Systems & Construction

Electronics

Computer Technology

Software & Information Technology

Medical Devices

New York

Merchant &amp; Gould is pleased to announce that attorneys Heather Kliebenstein, and Luciano Ricondo have been selected as members of the Leadership Council on Legal Diversity (LCLD) 2018 Class of Fellows and Pathfinders, respectively.



“It’s a well-deserved honor for Heather &amp; Luciano to be recognized for their leadership potential in connection with LCLD’s Fellows and Pathfinders programs,” said Chris Leonard, CEO and Managing Director of Merchant &amp; Gould, as well as an&nbsp;<a href="http://www.lcldnet.org" target="_blank" rel="noopener">LCLD Member</a>.&nbsp; “We are extremely proud of them both and are excited about their participation in these programs.”



<h2 class="wp-block-heading">Heather J. Kliebenstein</h2>



Heather is an intellectual property attorney and partner at Merchant &amp; Gould. She is also the chair of the firm’s litigation practice group. As someone with deep technology and IP experience, Heather is the go-to resource for companies requiring focused, strategic intellectual property insight.



Heather focuses mainly on trademark, trade dress, copyright, false advertising and unfair competition litigation.&nbsp; However, with a technical background, Heather has prosecuted patents and litigated many patent disputes.&nbsp; This allows her to offer something unique in the IP and technology litigation field—someone who can understand and litigate intellectual property disputes that combine multiple forms of intellectual property.&nbsp; &nbsp;



As an IP litigator, Heather has secured several victories in court and settlement negotiations (see some Representative Cases below). She is the trusted advocate you can turn to when you need representation in or before federal court, appellate court, the Trademark Trial and Appeal Board, the Federal Trade



A strong IP strategy does not stem only from handling litigation well. It also comes from smart counseling regarding your business’s assets. To that end, a significant part of Heather’s practice is counseling clients to strengthen their intellectual property portfolios and to manage their risks. &nbsp;Heather works with a number of clients to help identify and secure their intellectual and property technology needs, including through building and managing trademark and copyright portfolios worldwide, and reviewing agreements such as technology licensing and vendor agreements. Heather also counsels clients regarding advertising claims and online advertising issues under the Lanham Act and state false advertising laws.



She offers these services to companies of all sizes, from solo startups to Fortune 500s. She knows that what most business owners need is a reliable counselor they can turn to when they need help in the intellectual property and technology space.



According to LCLD President Robert J. Grey, Jr., the LCLD Fellows Program offers participants “a year-long, in-depth program devoted to relationship-building, in-person training, peer-group projects, and extensive contact with LCLD’s top leadership and the best teachers in the business.”



<h2 class="wp-block-heading">Luciano A. Ricondo</h2>



Luciano drafts&nbsp;and prosecutes domestic and foreign&nbsp;patent applications in the mechanical, electrical, computer, and software-related arts. He also prepares and prosecutes domestic and foreign industrial designs. As part of his patent prosecution practice, Luciano helps clients traverse obstacles to patenting software and business methods, such as subject matter eligibility challenges based on the United States Supreme Court’s Alice v. CLS Bank decision.



In addition to patent prosecution, Luciano provides litigation support in a variety of areas, including drafting&nbsp;opinion letters regarding patentability, patent infringement, and freedom to operate.



Technologies and industries relevant to Luciano’s practice include&nbsp;medical devices, telecommunications,&nbsp;renewable energy, industrial machinery,&nbsp;consumer products, software, and e-commerce.



Luciano&nbsp;serves on the diversity committee at the firm and is a member of the Hispanic National Bar Association (HNBA). In his spare time, Luciano&nbsp;has an active lifestyle which includes hiking, running, and traveling.



According to LCLD President Robert J. Grey, Jr., the LCLD Pathfinder Program offers participants “intensive in-person training, online experiential learning, and opportunities to network with peers and esteemed LCLD Fellows in small group gatherings.”



“We believe it’s a program that can help catapult a person’s career forward.”



Merchant &amp; Gould is proud to be an&nbsp;<a href="http://www.lcldnet.org" target="_blank" rel="noopener">LCLD Member Firm</a>.



<h2 class="wp-block-heading">The Leadership Council on Legal Diversity (LCLD)</h2>



Founded in 2009, LCLD is a growing organization of more than 285 corporate chief legal officers and law firm managing partners who are personally committed to creating a more diverse and inclusive legal profession. The LCLD Fellows program, which has trained more than a thousand mid-career attorneys since 2011, is one of LCLD’s most important initiatives. The LCLD Pathfinder Program is now in its third year as a full-scale program, having been piloted in 2015 among a select number of LCLD Member law firms and corporations. It is an initiative that has filled a gap in LCLD programming, targeting junior associates and the youngest members of corporate law departments. For information, visit www.lcldnet.org.

Heather Kliebenstein and Luciano Ricondo named to Leadership Council on Legal Diversity

Please join LCLD Alumni and current program participants from Merchant &amp; Gould&nbsp;in a panel discussion about how businesses can be prepared for sudden changes in the market and capitalize on their innovations.



<h2 class="wp-block-heading">Topics of discussion include:</h2>



1. How Covid-19 caused a rush to file and/or update patent applications for technology relevant to the outbreak and how having procedures in place for managing IP could help companies move quickly in response to changes in market demand.



2. Federally funded research, “march-in” rights, and compulsory licenses in the time of medical crisis.



3. How litigation has increased during the pandemic and how to respond to demands for intensified timelines and immediate results.



<hr class="wp-block-separator has-alpha-channel-opacity"/>



<h2 class="wp-block-heading">Panelists:</h2>



<a href="https://www.lcldnet.org/admin/content/event/add/%20https:/www.lcldnet.org/directory/john-thomas-winemiller/">John Winemiller</a>&nbsp;– Partner, Office Managing Partner-Knoxville, Merchant &amp; Gould, P.C., 2018 Fellow



<a href="https://www.lcldnet.org/directory/loretta-l-freeman/">Loretta Freeman</a>&nbsp;– Partner, Merchant &amp; Gould, P.C., 2018 Pathfinder



<a href="https://www.lcldnet.org/directory/laura-hupp/">Laura Hupp</a>&nbsp;&#8211; Associate, Merchant &amp; Gould, P.C., 2019 Pathfinder



<a href="https://www.lcldnet.org/directory/heather-kliebenstein/">Heather Kliebenstein</a>&nbsp;– Partner, Litigation Chair, Merchant &amp; Gould P.C., 2020 Fellow



<a href="https://www.lcldnet.org/directory/luciano-ricondo/">Luciano Ricondo</a>&nbsp;– Associate, Merchant &amp; Gould, P.C., 2020 Pathfinder



This event is sponsored by the LCLD Alumni and Merchant and Gould, PC.



<figure class="wp-block-image"><img decoding="async" src="https://www.lcldnet.org/media/mce_filebrowser/2020/08/31/Image_8-31-20_at_11.54_AM.jpeg" alt=""/></figure>



<figure class="wp-block-image"><img decoding="async" src="https://www.lcldnet.org/media/mce_filebrowser/2020/08/31/LCLDLogo-Rev2014-W.jpg" alt=""/></figure>

Stories of Innovation: The Impacts of COVID-19 on Intellectual Property

New York Office Grows Local Leadership



Merchant &amp; Gould is pleased to announce the promotion of <a href="/people/luciano-a-ricondo/">Luciano A. Ricondo</a> to partner in its <a href="/offices/new-york/">New York office</a>, effective Jan. 1, 2022.  



Luciano helps his clients to strategically grow their patent portfolios and obtain comprehensive intellectual property protection for new products and businesses. &nbsp;He drafts and prosecutes domestic and foreign patent applications in the mechanical, electrical, computer, and software-related arts. Luciano also prepares and prosecutes domestic and foreign industrial designs. &nbsp;While his practice expands across multiple industries, Luciano’s practice primarily focuses on medical devices and software including healthcare communications connecting healthcare professionals with patients. In addition to patent prosecution, he provides litigation support in a variety of areas, including drafting opinion letters regarding patentability, freedom to operate, and patent infringement.



“We are excited to expand our leadership and promote Luciano, who exemplifies the professionalism and experience that help our firm to grow and be successful, especially when our clients need us most,” said <a href="/people/peter-a-gergely/">Peter Gergely</a>, managing partner of Merchant &amp; Gould’s New York office. “His promotion brings greater depth to our Mechanical, Electrical and Software Practice Groups in some of the most inventive industries in New York and across the country.”

Merchant & Gould Promotes Luciano A. Ricondo to Partner

Grows Leadership in Minneapolis, Denver and New York



Merchant &amp; Gould promoted three attorneys in three of its offices around the country – a notable way to launch the New Year.  Effective Jan. 1, 2022, the promotions include <a href="/people/michael-a-erbele/">Michael A. Erbele</a> in Minneapolis; <a href="/people/luciano-a-ricondo/">Luciano A. Ricondo</a> in New York; and <a href="/people/robert-s-sykes/">Robert S. Sykes</a> in Denver.



“We are excited to expand our leadership and embrace Merchant &amp; Gould’s growth in 2022, especially when new technologies are increasing and when our clients need us most.  These promotions bring depth to our practice groups in inventive industries across the country,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould.  



Michael A. Erbele, promoted to partner in the Minneapolis office, focuses on intellectual property litigation and appellate-level disputes, representing clients in federal courts and agencies throughout the United States and in state court in Minnesota. He is involved in all aspects of complex intellectual property cases, from pre-suit investigation and discovery, through trial, post-trial, and appeal. &nbsp;Michael’s practice centers on patent infringement, trademark and trade dress infringement, unfair competition claims, and trade secret misappropriation. &nbsp;He has a technical background in chemistry and has represented clients in a wide variety of fields, including consumer products, financial services, medical devices, pharmaceuticals, and software.



Luciano A. Ricondo, promoted to partner in the New York office, helps his clients to strategically grow their patent portfolios and obtain comprehensive intellectual property protection for new products and businesses. &nbsp;He drafts and prosecutes domestic and foreign patent applications in the mechanical, electrical, computer, and software-related arts. &nbsp;Luciano also prepares and prosecutes domestic and foreign industrial designs. &nbsp;While his practice expands across multiple industries, Luciano’s practice primarily focuses on medical devices and software including healthcare communications connecting healthcare professionals with patients. In addition to patent prosecution, he provides litigation support in a variety of areas, including drafting opinion letters regarding patentability, freedom to operate, and patent infringement.



Robert S. Sykes, promoted to partner in the Denver office, is an intellectual property attorney who practices in the mechanical, electrical, aerospace, software and telecommunication spaces. When preparing a patent application for a client, he emphasizes strategic planning and detailed drafting to strive for efficiency. &nbsp;Robert believes this is the best way to create real value for clients and their intellectual property portfolios. &nbsp;

Merchant & Gould Promotes Three Attorneys to Partners in Three Offices

Mechanical

Electrical & Software

IP Due Diligence

Licensing

Suzanne Webb

Partner

Luciano A. Ricondo

New York Intellectual Property Law Association (NYIPLA) 
New York City Bar Association 
Hispanic National Bar Association (HNBA)

Professional Affiliations

Rising Star by Super Lawyers, 2016

Awards & Recognition

<h3>Publications</h3>
&#8220;Patent Examiner Interviews,&#8221; February 2018, Lexis

Luciano A. Ricondo

Practices

Industries

Education

Admissions

Professional Affiliations

Awards & Recognition

Publications & Speaking Engagements

Publications