Experience

Intellectual Property Strategy for Businesses

For a major media company, we formulated and executed a strategy to avoid possible patent suit by one of two rival digital media distribution vendors where both vendors were being used by different divisions internationally.

For an emerging nanotechnology company, we formulated and executed a strategy to establish certain rights over technologies developed under Government grants, subawards and awards to company’s subcontractors. This involved negotiating multi-way agreements between a prime government contractor, the company and an academic institution.

For an image processing technology company, we formulated criteria to determine the appropriate international jurisdictions to seek patent protection in order to achieve the most cost-effective strategy. This involved careful analysis of the technology, its vulnerabilities, and the expected modes of infringement.

For a growing internet messaging software company, we formulated patent application strategy and directed patent application process for the underlying inventions embedded in the software.

For a major audio-equipment manufacturer, we analyzed a seminal invention regarding color image processing. Identified three rapidly growing product applications in the consumer electronics space, directed the development of prototype implementations for each, approached several vendors to present the technology and conducted negotiations with one of them in order to grant rights to the technology.

For an image processing software development company, we worked on the development of derivative inventions that improved on their seminal patent application, including inferior patentable approximations of the invention, in order to develop an intellectual property position for a software product.

On behalf of a rapidly growing medical information software company, we produced an intellectual property strategy involving the strategic planning of the patent application process, dealing with HIPAA-related requirements and their impact on licensing terms and liability issues, and the negotiation of several customer contracts.

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