Paul Roberts work email
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From leading Patent Legal Operations at two tech-focused Fortune 500 companies, to leading business negotiations at another two Corporate Venture groups, to co-founding two startups, I’m an agile IP strategist whose scope of experience spans the protection and commercialization of IP. Using data-driven plans, creative risk mitigation approaches, and sound practices, I enhance both the value and security of intellectual property and beyond.I leverage matrixed strategies to develop, fortify, and maximize IP portfolios that generate substantial revenue or other commercial value and mitigate risk. These strategies include:► IP/Patent Portfolio Development ► Patent/IP Commercialization & Licensing► Patent Operations & Acquisition► Project Management & Process Design► Holding Company & Team LeadershipAs the conduit between legal and commercial organizations, I’m a valued advisor to who builds consensus among competing interests, including:► Advising C-suite executives on emerging IP challenges.► Completing extensive work for board directors on intangible assets.► Establishing standards and practices to support transaction attorneys.► Advancing stalled negotiations and litigation.I’m a thought leader and influential voice in global IP and board practices, with contributions that include:► 15+ years on the board of the Licensing Executives Society (LES).► Pioneering IP standards at the board level.► Extensive public speaking and publications.► Qualification from the National Association of Corporate Directors.► Board Governance education from Stanford Law Director’s College.Equally effective at navigating large, complex corporate structures and actively building IP-driven startups from the ground up, I offer the depth and breadth of expertise to enhance and secure diverse IP portfolios.
The Johns Firm
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Of CounselThe Johns FirmLos Gatos, Ca, Us
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Of CounselSnyder, Clark, Lesch & Chung Aug 2020 - PresentNotable Engagement with Sandia National Lab (US Dept. Of Energy-owned, Corporate Operated) April 2022 – presentLicensing Executive: Hybrid business and legal role identifying licenseable technology and commericializing same via tech transfer to benefit US public and to generate revenue for further research with focus on cybersecurity, hydrogen fuel, electric grid, and energy storage. Coordinating with Department of Energy to acquire license rights of DOE-owned technology.Notable Engagement with Eclipz.io as Chief IP Officer, Acting-CLO, Board Secretary, Data Privacy Officer July 2021 – April 2022Operated as Chief IP Officer/CLO to resolve merger dispute between licensor and licensee; leveraged commercial agreements to win TRO/Preliminary Injunction rulings against licensor who held software hostage; secured financing via distressed capital raise; developed and activated strategy to secure damages and return of equity stemming from material breaches.
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Head Of Commercial Ip Strategy For Bat & Corporate VenturesBritish American Tobacco Jan 2020 - Aug 2020London, GbOperating as Chief IP Officer, I leveraged my legal and commercial expertise as a bridge between legal and business organizations. I directly advised the C-suite on global patent litigation and portfolio development and corporate ventures, led the development of a robust IP strategy, and translated legal options into practical commercial decisions.Before returning to the US due to COVID, I led commercial negotiation that advanced IP litigation with a major competitor from an inherited standstill to a term sheet in mere weeks; and created and executed a matrixed commercialization strategy, as well as the investment and acquisitions strategy for a new £150M corporate venture entity. -
Senior Director Of Technology And Ip CommercializationGe Ventures Mar 2018 - Jan 2020Personally securing 70% of our technology & IP licensing group’s gross revenue objective, I directed commercialization strategy and led negotiations of technology transfers, spin-outs, joint ventures, licensing, and sales to maximize revenue potential of enterprise software, cybersecurity, cloud-based or on-premises data offerings, and FinTech, as well as strategic initiatives (additive/3D printing, inventory-on-demand, and industrial asset sales technology, brand licensing).
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Co-Founder, Chief Ip OfficerImpact Engineered Wood Sep 2015 - Feb 2018Campbell, Ca, UsImpact Engineered Wood is bringing fundamental change to the world of Engineered Wood materials. Impact uses an innovative, IP-protected process which is low energy, low-pressure and uses no toxic chemicals to create a remarkable material that is stable against moisture, insect resistant and fire-resistant.Impact uses an IP-licensed technology developed over many years and has the ability to manufacture and deliver engineered wood products globally. -
Co-Founder And Vice President, Chief Patent CounselInventergy (Nasdaq: Invt) Jan 2013 - Sep 2015Partnering with fellow experts to launch an ethical, professional IP licensing outsourcing firm, I led licensing strategy from identifying licensees and charting claims, to develop pitches and defining license terms and conditions. I also prepared, prosecuted, and managed new trademark applications, renewals, and watch notices.To build the business, I sourced legal and technical experts and investors, including leading the Series A review with Hudson Bay Capital and Series B with Fortress. We built strong patent portfolios that unlocked and optimized IP value for multiple technology leaders. Specific deals included the purchase agreement for hundreds of Nokia, Panasonic, and Huawei patents for licensing.
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Vp Patent Law & CommercializationRovi Feb 2012 - Jan 2013Rovi (later merged with TiVo, now part of Xperi) - I was recruited to Rovi to enhance and implement an IP strategy for an existing patent licensing group, generating over $300M annually from IP covering personalized content discovery, next gen platform, advertising, data & meta-data, time-shifting. By reviewing and categorizing IP portfolios, I identified unleveraged areas for licensing, including Blu-ray Disc Live, eBooks, and Fantasy Sports, and led market assessment, go-to-market, and go-to-target plans. As a member of the Innovation Council, I supported the larger corporate technology strategy.In addition to IP commercialization, I assessed the impact of patent pool and standards-group policies on licensing obligations (RAND), and I developed processes and tools to enhance revenue, accelerate deal flow, assess competitive IP intelligence.
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Lead Patent Attorney And Director Global Patent OperationsAccenture Mar 2008 - Feb 2012Dublin 2, IeTo strengthen the relevance of IP to the business, I co-developed a strategy with our general counsel, chief technology officer, and chief strategy officer, and I grew the patent portfolio 25% in one year and earned us the #1 ranking for industry impact in Wall Street Journal’s IT Industry Patent Scorecard 7 of 14 years (and top 5 ranking every year).As the director of IP organizational strategy and senior executive of patent review operations, the innovation committee, and the patent awards program, I led and right-sized the global patent operations team, budget, and large global network of outside counsel in patent creation and litigation as plaintiff and defendant. I also developed policies, procedures, training programs, and playbooks for patents, software, and open source compliance, and represented the firm at the Association of Chief Patent Counsels.Leading numerous critical initiatives, I helped realize over $1B in tax liability savings with a strategy to transfer IP management from Switzerland to Ireland, pioneered a software licensing toolkit to support hundreds of deals, negotiated and drafted portions of commercial agreements worth $100M+, and collaborated on Bilski business method friend-of-court briefs to the Federal Circuit and Supreme Court. -
Global Division Ip Counsel, Comm.& High TechAccenture Mar 2004 - Mar 2008Dublin 2, IeManaged 3 global divisions and another patent attorney addressing: Communications & High Technology; Finance & Performance Management; and Accenture Financial Services. Led development of strategic plan for IP group resulting in hiring 3 more attorneys and 2 paralegals. Revised firm policy around heavily litigated/licensed Katz patents (NPE/troll) as they relate to call center operations and indemnification of clients. Led development of licensing plan and templates. Received “significantly exceeds” evaluations and promotion.
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Manager Of Patent Acquisition DepartmentMci-Worldcom Jun 2000 - Mar 2004From leading the management of the entire global patent portfolio, I protected innovative technologies and developed strategies to support enterprise needs, including management of patents in standards development, and leveraging the patent portfolio as collateral to secure financing during a historically large bankruptcy.
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Patent AttorneyMci Jun 1999 - Jun 2000Basking Ridge, Nj, UsI joined MCI/WorldCom as a patent attorney, managing outside counsel and conducting patent prosecution, as well as working on key licensing and antitrust issues. I also served as the lead patent attorney for several of the inventions of Vint Cerf, a father of the Internet. -
Patent AssociateMcdermott Will And Emery Oct 1997 - Jun 199920+ Locations, Worldwide, UsI prepared and prosecuted patent litigation in the semiconductor, electrical, computer, and communications fields, including presenting oral arguments before the U.S. Board of Patent Appeals and Interferences, as well as drafting legal opinions, software licensing agreements, and patent litigation settlements. -
Patent AttorneyLarson & Taylor Oct 1995 - Oct 1997I prepared litigation, prosecuted cases, and drafted opinions and agreements for the boutique intellectual property law firm.
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Patent ExaminerUs Patent And Trademark Office Aug 1994 - Oct 1995Alexandria, Virginia, UsI examined computer software and hardware patent applications dealing primarily with 3D computer graphics, computer visualization, and data structures, with a heavy emphasis on §101 patent-eligible subject matter (pre-software guidelines).
Paul Roberts Skills
Paul Roberts Education Details
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Stanford Law SchoolFocus On Board Of Directors - Board Governance -
Unh Franklin Pierce School Of LawIntellectual Property
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Whittier Law SchoolIntellectual Property Law
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University Of MarylandElectrical Engineering
Frequently Asked Questions about Paul Roberts
What company does Paul Roberts work for?
Paul Roberts works for The Johns Firm
What is Paul Roberts's role at the current company?
Paul Roberts's current role is Of Counsel.
What is Paul Roberts's email address?
Paul Roberts's email address is pa****@****ail.com
What schools did Paul Roberts attend?
Paul Roberts attended Stanford Law School, Unh Franklin Pierce School Of Law, Whittier Law School, University Of Maryland.
What skills is Paul Roberts known for?
Paul Roberts has skills like Intellectual Property, Licensing, Patents, Patent Litigation, Patent Prosecution, Due Diligence, Strategy, Litigation, Mergers And Acquisitions, Contract Negotiation, Start Ups, Software Licensing.
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