Experience

Business & Corporate Law

· Representation of clients in corporate reorganizations, mergers, and acquisitions ranging from $1 million to $120 million

· Representation of clients in public and private securities offerings

· Representation of clients in venture capital, private equity, convertible debt, and other equity financing

· Representation of clients with respect to securities compliance and periodic reporting requirements

· Successful negotiation and representation in the complex sale of the IP assets of two financial analysis and modeling companies to a renowned independent provider of credit ratings, indices, risk evaluation, investment research and data provider

· Advised a music/entertainment company on its internal company reorganization and intellectual property matters

· Representation of clients in divisional spin-offs, joint ventures, alliances and other teaming arrangements, leveraged buy-outs, venture capital investments, and employee and owner compensation arrangements

· Former in-house counsel for a publicly traded wireless technology company, drafted template sales and service agreements; drafted and negotiated licenses and alliance, service and airtime reseller agreements; managed domestic and foreign litigation and intellectual property portfolio; and provided counsel in general corporate matters

Government Contracts

· Representation of a publically traded company that designs, manufactures, and supplies products for first responders, first receivers, government, military, industrial and commercial marketplaces in SEC/public company matters; mergers and acquisitions, joint ventures and strategic alliances; corporate governance matters; research, development, and distribution agreements and other commercial contracting matters

· Representation of national and regional government contractors, subcontractors, owners, and design professionals in the negotiation and drafting of contracts

· Former export control manager for a defense contractor

Intellectual Property & Technology

Licensing & Technology Transfer

· Successful negotiation and representation of a broadband digital media provider in a multi-million dollar licensing agreement with a television production company that creates custom programming for inflight presentations

· Successful negotiation of a manufacturing licensing agreement on behalf of a sports-related product company with a major manufacturer

Open Source, SaaS & Other Innovative Distribution Models

· Represented various open source vendors in intellectual property and general contractual matters

· Represented ASP, SaaS and Cloud Computing providers and customers in drafting and negotiation of SLA, subscriber, user, reseller and other agreements

· Successful negotiation of a significant, multi-million dollar software licensing agreement between a business and technology consulting company and a debt acquisition and management company

· Represents clients in negotiating technology transfer agreements with universities

Technology Start-ups

· Advise commercial and government technology start-ups regarding intellectual property protection and early formation matters

Trademarks, Domain Names and Other Brand Protection

· Draft and negotiate trademark licenses on behalf of licensees and licensors

· Representation of clients in connection with enforcement of trademarks and domain names

Computer Software & Hardware

· Draft, negotiate and advise on software development, license, distribution and VAR agreements and hardware manufacture, sale, lease, distribution and reseller agreements

Transactional Intellectual Property

· Draft, review and negotiate software, patent, trademark and trade secret licenses and sales agreements; independent contractor, consulting and sales agent agreements; professional service contracts; non-disclosure agreements; technology escrow agreements; and partnership, teaming, joint venture, supply, distribution and marketing agreements

· Perform due diligence of IP and other matters in connection with M&A transactions

Internet and E-Commerce

· Representation of clients in the development and deployment of mobile apps and online retail offerings

· Develop and advise on social media policies

Nonprofit Corporate Services

· Represent nationally recognized professional associations in intellectual property related matters, including the negotiation of a variety of association membership management software licenses, and related platform implementation and maintenance agreements

Cyber Security and Information Privacy

· Represented various organizations in connection with security breach attempts (due to theft, SQL injection attacks and brute-force attacks), and assist in cross-functional assessment, containment and response efforts, developed mitigation strategies, and assisted clients in assessing and complying with statutory notification requirements and preparing information security policies

· Draft and advise on privacy policies and procedures

General Information

· Member: Maryland State Bar Association - Program Committee of the Intellectual Property Section; Emerging Companies Committee; and International Law Committee

· Member: District of Columbia Bar Association

· Member: American Bar Association

· Vice President: Moveable Feast Board of Directors

· Member: Society for International Affairs

· Member: National Contract Management Association

· Certified Licensing Professional from Licensing Executives Society (LES)

Speaking / Writing

· Author: 5 Legal Considerations When Negotiating Technology Contracts, Association TRENDS (October 31, 2012)

· Presenter: Technology & Life Sciences Entrepreneurs Boot Camp, Johns Hopkins University (May 1, 2012)

· Author: "FFATA Sub-Award Reporting Requirements," Inside the Minds: Government Contracts Compliance, 2011 Edition (Aspatore Books).

· Presenter: IP & Social Media 2010: New Tools & New Rules, Client Presentation, January 28, 2010

Articles

Five Legal Considerations When Negotiating Technology Contracts

New Private Placement Filing Requirement for Broker-Dealers - FINRA Rule 5123

Key Provisions in a "Software as a Service" Contract: What Every Customer Should be Negotiating

SEC Adopts Final Net Worth Standard For Accredited Investors

Developing Your Technology and Business through a CRADA

APG Fraud Hotline and False Claims Acts

Events

Technology & Life Sciences Entrepreneurs Bootcamp: WTP speakers on finding financing
May 16, 2012 - 7:15am - 9:00am