Paul F. McQuade: Lawyer with Greenberg Traurig, LLP

Paul F. McQuade

Co-Chair, Global Patent Prosecution Group
Washington,  DC  U.S.A.
Phone202.331.3187

Peer Rating
 5.0/5.0
AV® Preeminent

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Practice Areas

  • Intellectual Property & Technology
  • Government Contracts
 
Contact InfoTelephone: 202.331.3187
Fax: 202.261.0119
http://www.gtlaw.com/People/Paul-F-McQuade
 
University Bethany College, B.S., 1979
 
Law SchoolUniversity of Tennessee College of Law, J.D., 1983
 
Admitted1983, Tennessee; 1984, District of Columbia; 2000, Virginia; U.S. Court of Appeals for the Federal Circuit; U.S. District Court for the District of Columbia; U.S. Court of Federal Claims; U.S. Patent and Trademark Office
 
Memberships American Bar Association (Member, Public Contracts Law Section, Committee on Government Research & Development and Intellectual Property).

 
LanguagesFrench
 
BornHempstead, New York, 1957
 
Biography

Paul McQuade focuses his practice on intellectual property law and government contracts, counseling both commercial and federal sector clients on improving their competitive position through intellectual property procurement and enforcement. Paul conducts intellectual property audits and due diligence in acquisitions, prepares and negotiates licensing, research and development, and collaborative agreements between private parties and with government agencies in contract procurement and other transactions. He has litigated patent infringement and trade secret cases in a number of jurisdictions and has lectured and appeared in articles concerning intellectual property enforcement, data rights and software licensing.

Early in his career, Paul served as a judicial clerk at the U.S. Court of Appeals for the Federal Circuit, and at the U.S. Court of Federal Claims, which courts, respectively, have national jurisdiction over patent appeals and significant government contracts matters. He also served as a trial attorney at the U.S. Department of Justice (Commercial Litigation Branch, Claims Court/Federal Circuit Section).

Areas of Concentration

· Intellectual property

· Government contracts

· Technology law and related research and licensing transactions

Professional & Community Involvement

· Member, American Bar Association, Public Contracts Law Section Committee, Government Research & Development and Intellectual Property

· Member, Federal Circuit Bar Association's Procurement Contracting Study - IP Subcommittee

· Member, Licensing Executives Society

· Board of Directors, The Student Conservation Association, Charlestown, NH (1998-2004)

Awards & Recognition

· Recognized, "IAM Licensing 250: The World's Leading Patent and Technology Licensing Practitioners," Intellectual Asset Management (IAM) magazine, 2010

· Rated, AV Preeminent® 5.0 out of 5

Professional Experience

Significant Representations

· Conducted intellectual property audits for major corporations, engaged in strategic planning with regard to intellectual property deployment to achieve market share goals.

· Conducted intellectual property due diligence on client acquisitions and divestitures both in commercial and government contractor sectors.

· Defended patent infringement declaratory relief action through dismissal, helped to achieve summary judgment of non-infringement.

· Negotiated some of the largest government research and development contracts awarded by DARPA in 1997-1998. Drafted complex teaming agreements, joint development programs, licenses, prime contracts and subcontracts.

· Represented clients in contracts and takings claims before the courts where he once clerked and where he previously served as government defense counsel.

· Litigated cases for both the government contracts and patent sections of the Commercial Litigation Branch. At the U.S. Department of Justice, Paul defended agencies against a wide variety of contract claims and appeals including R&D, cost accounting disputes, defective specification claims, and disputes over ownership rights in intellectual property.

° Certain of the above representations were handled by Mr. McQuade prior to his joining Greenberg Traurig, LLP.

Legal Experience

· Trial Attorney, Claims Court/Federal Circuit Section of the U.S. Department of Justice, Civil Division, Commercial Litigation Branch

Clerkship

· Judicial Clerk, the Honorable Jack R. Miller, U.S. Court of Appeals for the Federal Circuit

· Judicial Clerk, the Honorable Lawrence S. Margolis, U.S. Claims Court (now the U.S. Court of Federal Claims)

Publications & Presentations

Articles, Lectures & Publications

Articles

Paul has written various news articles on data rights, copyright related legislation, intellectual property issues in eCommerce, and the regulation of new technologies.

· Co-Author, "Enforcing Data Rights," Federal Publications, Briefing Papers

· Co-Author, "Non-Recurring Cost Recoupment", Federal Publications, Briefing Papers

· Co-Author, "Impasse at Cartegena - An Analysis of the Current Status of the Bio-Safety Protocol"

Lectures

Paul has lectured on intellectual property issues related to protection and ownership of industrial and aesthetic design, American Institute of Graphic Artists (AIGA) and Association of Professional Design Firms (APDF). He has also been quoted in IPLawCast and several law-related news publications including, Legal Times, National Law Journal, The Recorder, Potomac Techway, and Atlanta Legal Times concerning developments in the field of intellectual property law.

· Presenter, "Ensuring Compliance with Patent Marking Requirements While Avoiding Civil Penalties for False Marking," February 2010

· Chairman, "Counseling Clients in the Digital Age," D.C. Bar CLE Program on E-Commerce 1999, 2000 and 2001

Speeches

Paul has presented on technical data rights and patent ownership at NCMA, APMP, and ABA seminars and on aviation-related design protection, PMA's and identicality.

· Speaker, "Cross-Sector Models for Innovation, Incubation and Intellectual Property," American Meteorological Society Forum, April 27, 2011

 
ISLN904901441
 


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Office Information

Paul F. McQuade

2101 L St., N.W., Suite 1000
WashingtonDC 20037




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