Jeffrey Peterson Photo

Jeffrey D. Peterson

Partner
Sub-Practice Leader, Licensing & Technology Agreements

Overview

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.

Clients appreciate Jeff’s business-minded approach to their matters, from day-to-day licensing and contractual issues to major cross-border transactions. Additionally, Jeff’s scientific background aids his ability to understand and appreciate nuances in his clients’ complex technologies and provide tailored advice.

Beyond helping companies commercialize their IP assets, Jeff is also a registered patent attorney and provides clients with strategic counsel on obtaining strong patent, trademark, and copyright protection.

A respected IP thought leader, Jeff has recently spoken and written about timely topics such as IP security interests to key considerations in drafting IP license agreements for technology. 

Experience

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

Professional Activities

  • Member, American Bar Association
  • Member, State Bar of Wisconsin
  • Member, Wisconsin Intellectual Property Law Association
  • Member, Association of University Technology Managers
    • Central Region Meeting Planning Committee
  • Member, Licensing Executives Society
  • Member, Wisconsin BioForward Organization

Education

Bar Admission

Court Admissions

Education

Bar Admission

Court Admissions

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