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Jeffrey D. Peterson

Partner

Overview

Jeff’s clients turn to him for help in protecting intellectual property assets, including patents, trademarks and copyrights, as well as for strategic counsel on all aspects of intellectual property licensing.

Jeff serves as lead licensing counsel for a diverse group of companies ranging from large biotech concerns and new technology start-ups to software, agribusiness, and midsize manufacturing companies.

 

An experienced lawyer with a background in molecular biology, Jeff has an in-depth understanding of the complex technologies behind his clients’ IP assets. Clients benefit from Jeff’s extensive experience in negotiating and drafting a full range of intellectual property and software licensing agreements, joint development and collaborative and sponsored research agreements; and material and university transfer agreements. 

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

Admissions

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