Critical Legal Issues for Early Stage Companies Co-sponsored by IEEE Technology and Engineering Management (TEM) Society, Boston Chapter

December 6, 2016

Speaker Slides

Trade Secrets and Startups

Steven J. Henry

Patents and Startups

Marc S Johannes, Wolf, Greenfield & Sacks, P.C.

Critical Legal Issues For Early Stage Companies

Justin M. Nesbit, Gesmer Updegrove LLP

Early stage companies have to address numerous legal issues, including, but not limited to: where to incorporate, founders equity and employee stock option plans, employee agreements including confidentiality and assignment of invention agreements, non-compete agreements, documenting innovations and potential inventions, provisional, utility, and design patents, trademarks and copyrights.

Our panel of legal experts will address these legal fundamental issues that early stage companies must consider during their earliest days in order to lay a strong foundation for success.

Agenda:

630-730 PM Registration & networking 

730 -740 PM ENET Chairman’s announcements

740 -755 PM E Minute – Up to 3 Startup companies presentations

755 -845 PM – 3 or 4 expert speakers on the night’s topic

845 -900 PM – Audience / Speakers Q & A 

900 -930 PM – Final networking including meeting speakers

Panel:

Steve Henry, Esq., IP and General Counsel, Ab Initio Software LLC

Steve Henry, an IEEE Life Member and Certified Licensing Professional, is currently IP and General Counsel at Ab Initio Software LLC, after a long career in private practice.  He has over 40 year experience, SB and SM degrees in Electrical Engineering and Computer Science from MIT, and a law degree from Georgetown.

Steve’s private practice career involved the representation of companies of all sizes, universities, individual professionals, investors and other members of the IP community, and covered the full range of IP activities, including portfolio building, licensing and other IP transactions, litigation (as both plaintiff and defendant), providing risk management opinions to companies and investors, as well as IP strategy development and execution.  An advocate of small business, Steve counseled numerous startups, several to the point of successful acquisitions.  

He has extensive experience in a range of technical areas such as semiconductors, communications, imaging, gene sequencing and software, including open source software agreements and management of the use of open source software.    

Steve’s attention is frequently focused on the practical business implications of IP and contractual issues – avoiding risks and creating opportunities.

Marc Johannes, Shareholder, Wolf Greenfield & Sacks

Marc Johannes has 15 years of experience in all aspects of patent prosecution and client counseling including patent procurement, patent portfolio strategy and development, patent validity and infringement opinions, due diligence, clearance studies and advising clients in both offensive and defensive utilization of their intellectual property.

Marc’s experience spans a variety of technologies such as extensive experience in imaging technologies including x-ray, magnetic resonance imaging (MRI), medical imaging and equipment, computer vision and image processing, pattern recognition, and also includes experience in speech recognition and speech synthesis, electrical and optical devices, semiconductor devices, networking, MEMS devices and all aspects of software.

Prior to joining the firm, Marc served as a software engineer with Scansoft, Inc. where he was responsible for the design and development of an image acquisition, Image Processing, and Optical Character Recognition application programming interface for document analysis and management applications.

Marc’s graduate research has included projects in the areas of pattern recognition, computer vision and shape modeling, image understanding, and speech recognition systems.

Justin Nesbit, Partner, Gesmer Updegrove

Justin Nesbit loves to help build things (and companies).  He represents emerging and established companies with many aspects of their legal affairs.  Justin enjoys providing advice on complicated legal and business issues and always strives to be a part of his clients’ growth and success.

What has Justin “built” in the past? 1) He has negotiated and formed numerous licensing, consulting, sales, development and distribution contracts, many on behalf of one of the world’s preeminent universities. 2) He has helped to “put together” and close mergers, acquisitions and financings, and he enjoys rolling up his sleeves and working on many aspects of each transaction. 3) Clients rely on him for a wide variety of advice on the day-to-day corporate matters that every company must address if they wish to build a world-class enterprise. 4) Nothing makes Justin happier than building strong relationships with his clients, whether that involves discussing the search for the perfect college for a client’s child or learning about what pressing issues keep the client up at night.

Moderator: 

Bob Weber, Managing Director, Patent Kinetics, LLC

Robert Weber is a successful intellectual property professional, inventor, serial entrepreneur, management consultant, and senior executive. Presently, he is Managing Director, Patent Kinetics, LLC, a company that helps entrepreneurs and patent owners build and monetize valuable patent portfolios. Weber is an inventor with 28 issued US patents and a number of foreign counterparts assigned to Intertrust Technologies, where he served as SVP Business and Technology Strategy, 1996-1999. The Intertrust portfolio was characterized in the Wall Street Journal as a once in a generation billion dollar licensing opportunity. (Intertrust is presently a joint venture of Sony and Philips.) Most recently, Patent Kinetics and its legal team successfully resolved a patent and trademark case brought on behalf of the inventor and trademark owner. Previously, in his role of Vice President, Corporate Development and Licensing (part time), for Open Security Solutions, LLC., Weber was instrumental in licensing a patent portfolio relating to information security to a well-known patent licensing and assertion company and in obtaining a resolution of patent litigation that had been pending in the Eastern District of Texas. In 2009, this litigation was resolved in favor of OSS and its partner company. Weber has also been a Principal Consultant at Northeast Consulting Resources, Inc. At NCRI, his consulting practice focused on the intersection of business and technology. Weber divides his time between Boston and Silicon Valley. He is a former Vice Chair, Programs, of the Boston Entrepreneurs Network and is a member of the Licensing Executives Society.

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