Jeffrey D. Peterson

Jeff helps clients capitalize on crucial technology and IP assets through licensing and other strategic alliances.

He has extensive experience drafting and negotiating a full range of patent, trademark, and software licensing agreements, joint development agreement, collaborative, and sponsored research agreements, and material and university technology transfer agreements.

Jeff also represents clients in a wide range of information technology transactions, including preparing and negotiating software development agreements, cloud service and hosting agreements, data sharing and licensing agreements, SaaS agreements, master services agreements, service provider agreements, and more.

He serves as lead licensing counsel for a diverse group of companies ranging from high-tech start-ups to major public and private universities to leading multinational biotech, software, agribusiness, manufacturing, and consumer products companies.

Solutions in action

Jeff has a strong track record in providing clients with strategic counsel on their IP issues. He has:

• Negotiated and drafted worldwide exclusive and non-exclusive licenses in the fields of biotechnology, pharmaceuticals, software, manufactured products, agricultural products, and renewable fuel.
• Worked onsite as a licensing counsel for a leading biotechnology company, handling a client’s daily licensing issues.
• Handled technology transfer licenses for large research universities and government entities.
• Provided comprehensive counsel in all aspects of domestic and international patent prosecution. He has successfully conducted patent searches and patentability analyses; prepared patent applications; and prosecuted patent applications to allowance.
• Successfully conducted patent infringement analyses; patent validity studies; developed strategies to help clients avoid infringement risk; and assisted clients in patent prosecution.
• Assisted clients in international and domestic trademark prosecution; trademark clearance searching; licensing and unfair competition issues. Jeff regularly advises clients on the selection and proper use of trademarks and analyzes and assesses infringement risks. 
• Developed and managed trademark portfolios.
• Developed and implemented intellectual property protection policies.
• Served as counsel to obtain an investment from a Fortune 500 company, manage the transaction, and negotiate exclusive manufacturing, licensing, and supply agreements between the two entities.