Paul F. McQuade

Paul F. McQuade: Attorney with Greenberg Traurig, LLP
Attorney Awards
About Attorney Awards

Biography

Paul F. McQuade is a patent attorney with substantial government contracts experience. His practice spans both typical commercial intellectual property, with emphasis on licensing and IP-related transactions, and “government contracts IP” (rights in technical data and software) in the context of U.S. Government research and development and prime and subcontractor agreements. He offers strategic counseling on how best to maintain one’s IP position when doing business with the Government.

His work has included all manner of joint development and collaborative agreements between private parties and with government agencies: R&D procurements, OTA and OTP (prototype) Agreements, CRADAs, Work for Others, Sponsored Research, Cooperative Agreements, software licensing, Evaluation Agreements, and the like. He has defended clients against allegations of trade secret misappropriation and patent infringement both commercially and on government programs, and has brought and intervened in matters related to the Government’s alleged unauthorized use of patented inventions under 28 USC 1498.

He is a frequent lecturer on Intellectual Property in U.S. Government Contracting and for about a decade served as a Vice Chair of the ABA Public Contract Law Section’s Intellectual Property Committee.

Early in his career, Paul served as a clerk to judges on the U.S. Court of Appeals for the Federal Circuit, and the U.S. Court of Federal Claims. These courts have national jurisdiction, respectively, over patent and government contracts appeals and significant government contract and patent claims. After clerking, he served as a trial attorney at the U.S. Department of Justice (Commercial Litigation Branch, Claims Court and Federal Circuit Section) before entering private practice.

Concentrations

•Intellectual property
•Government contracts
•Technology law and related research and licensing transactions

Judicial Clerkships

•Hon. Jack R. Miller, U.S. Court of Appeals for the Federal Circuit
•Hon. Lawrence S. Margolis, U.S. Claims Court (now the U.S. Court of Federal Claims)

Recognition & Leadership

Awards & Accolades

•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 5.0

Areas of Practice (6)

  • Patents and Innovation Strategies
  • Intellectual Property & Technology
  • Government Contracts
  • Trade Secrets
  • Venture Capital & Emerging Technology
  • Space & Satellite

Education & Credentials

University Attended:
Bethany College, B.S., Chemistry, 1979
Law School Attended:
University of Tennessee College of Law, J.D., 1983
Year of First Admission:
1983
Admission:
1983, 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:

Professional & Community Involvement

•Member, American Bar Association, Public Contracts Law Section, Intellectual Property Committee, (Vice Chair 2021-2022, 2022-2023)
•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

Languages:
French
Birth Information:
Hempstead, New York, 1957
Reported Cases:
Experience: Representative Matters: 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. 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.; Government Experience: Trial Attorney, Claims Court/Federal Circuit Section of the U.S. Department of Justice, Civil Division, Commercial Litigation Branch
ISLN:
904901441

Peer Reviews

5.0/5.0
Peer reviews submitted prior to 2008 are not displayed.
Martindale-Hubbell® AV Preeminent Rating Badge
Peer reviews submitted prior to 2008 are not displayed.

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