F
F
U
L
N
O
T
E
L
P
P
A

Sanjay Prasad

prasad@appletonluff.com

Practice Experience and Education

Practice Experience
Sanjay Prasad draws from over twenty-five years of practice at the forefront of technology and intellectual property. He has extensive experience in advising entities on patent strategy including developing corporate patent strategy, advising on infringement matters, developing patent filing programs, patent acquisition and sales programs and patent and technology licensing, particularly in the high-tech sector including semiconductors, software, computer systems, internet, telecommunications and medical devices.

Sanjay’s experience includes:

  • As outside counsel, advising emerging and established companies on all aspects of patent matters including strategy, portfolio development, litigation, infringement matters, technology licensing.
  • As chief patent counsel to Oracle Corporation, leading the transformation of the patent strategy including its patent filings, licensing and litigation, and multiple policy, standard setting and software licensing matters.
  • As licensing and business executive - deal development, negotiation and close, patent sales and acquisitions, development of patent licensing programs, building and leading patent licensing/sales teams in the U.S. and abroad.
  • Patent strategy
    • Including assessment of strengths/weaknesses and development of strategy in view of organizational goals
  • Patent acquisitions
    • Including advising on the need for acquiring patents, developing an acquisition program and executing on the program
  • Patent and technology licensing
    • Including advising on the need and risks/advantages of inbound/outbound licensing
    • Development of strategy and execution
  • Patent portfolio development including patent application drafting and prosecution
  • Intellectual property policy
  • Standard setting organizations
    • Advising on compliance with IP policies
    • Evaluation and negotiation of agreements
  • Infringement matters
    • Evaluating potential infringements
    • Advising on strategy and negotiations with third parties

Education

  • B.S., Electrical Engineering, Boston University, 1986
  • M.S., Computer Engineering, Boston University, 1987
  • J.D., Syracuse University College of Law, 1992

Languages

English, Hindi

Professional History and Affiliations

Bars and Courts

  • California, admitted 1997
  • Massachusetts, admitted 1992
  • U.S. Patent and Trademark Office, admitted 1992
  • U.S. District Court for the District of Massachusetts, admitted 1993
  • U.S. District Court for the Northern District of California, admitted 1997
  • U.S. Court of Appeals for the Ninth Circuit, admitted 1998
  • U.S. Court of Appeals for the Federal Circuit, admitted 2015

 

 

Membership of Professional Bodies

  • Licensing Executives Society, lesusacanada.org
    •     Member
    •     Current Chair Elect, High Technology Sector
    •     Past chair of the Cloud Services and Software Committee
  • Boston University College of Engineering West Coast Alumni Counsel
  • Intellectual Property Owner’s Association, ipo.org
    •     Member
    •     Past member of Board of Directors
  • Association of Corporate Patent Counsel, acpcnet.org
    •     Member
    •     Past member of Executive Committee
  • Information Technology Association of America
    •     Past chair, IP Counsel’s Roundtable
  • California Invention Center.
    •     Past member of Advisory Board
  • Software Patent Institute
    •     Past member of Board of Trustees

Recent Projects

  • Retained as joint valuation counsel by licensor/licensee to evaluate third-party patent license agreements
  • Evaluated competitive IP landscape, developed IP strategy and patent filing program, patent incentive program and grew patent filings for a for leading Silicon Valley based enterprise software startup
  • Advised numerous entities including several high growth Silicon Valley based technology companies, established semiconductor manufacturer, various consortia, and an international investment company, on patent portfolio strategy, and implemented and executed strategic patent acquisition programs
  • Advised on and developed license terms and agreements for patent acquisition/licensing company
  • Developed patent strategy for several startups in the following areas: on-line advertising, operating systems, content streaming, content visualization, and alternative energy
  • Advised several governmental entities and universities on patent strategy and monetization

Publications

  • "Patent Infringement Risk Exposure Analysis" 
    • Les Nouvelles, Winter 2011 edition

 

  • "Extraterritorial Application of U.S. Patents"
    • The Patent Journal, December 2001

 

  • "Using U.S. Patents to Limit Activities Occurring Abroad"
    • California Daily Journal, November 1999

 

  • "Protecting Your Invention: The Early Steps"
    • Worcester Polytechnic Institute Venture Forum, October 1994

Teaching and Conference Appearances

RECENTLY

April 24, 2020

Wolves Den, New Mexico Institute of Technology (via videoconference)

Participated as a judge in this business plan competition

6/18/20

INTELLECTUAL PROPERTY 201 - 2020, Legal Issues for Innovators & Inventors

Panelist on this webinar hosted by Financial Poise

5/21/20

INTELLECTUAL PROPERTY 201 - 2020; Buying & Selling IP

Panelist on this webinar hosted by Financial Poise

March 26, 2020

INTELLECTUAL PROPERTY 101 - 2020,  Leveraging & Protecting Trade Secrets in the 21st Century.

February 27, 2020

Copyrights, Patents, and Trademarks...Oh My!

Panelist on this webinar hosted by Financial Poise covering the so-called “nuts and bolts" of copyright law, patents, and trademarks

 

January 30, 2020

INTELLECTUAL PROPERTY 101 - 2020; What Every Lawyer & Every Client Must Understand

Panelist on this webinar hosted by Financial Poise

 

May 14, 2019

IP Management for Startups

Moderated this panel at the Licensing Executives Society, inaugural Leading Edge Series event, titled:  Driving Innovation: Standards In Licensing And Intellectual Capital Management, at the US Patent & Trademark Office in San Jose, California

 

April 12, 2019

New Mexico Institute of Technology, 4th Annual Inventors & Entrepreneurs Workshop 

Participated in several sessions at this event at New Mexico Tech in Socorro, New Mexico, including:

  • Structure for Success: Forming, Financing and Protecting
  • Key Structures and Agreements For Startups, And How To Work Effectively With Your Lawyer
  • Developing and Exercising Your Path to Success

 

April 03, 2019

Intellectual Property Boot Camp 2019

Panelist on this webinar hosted by Financial Poise on Buying & Selling IP

 

March 06, 2019

Intellectual Property Boot Camp 2019

Panelist on this webinar hosted by Financial Poise on Choosing, Building & Protecting Your Brand

 

February 06, 2019

Intellectual Property Boot Camp 2019

Panelist on this webinar hosted by Financial Poise on Introduction to Key Concepts in Intellectual Property

 

1/23/19

Licensing Overview

Lecturer on licensing at a course at MIT entitled:  The market for ideas -- valuing patents as an inventor and entrepreneur

 

1/22/19

Software, Inventions, and New Ventures

Speaker at the Washington, DC chapter of the Licensing Executives Society Symposium on Patenting in 2019

 

5/1/18

IP is increasingly pervasive in society – How does that impact IP licensing?

Moderator of this panel at the Licensing Executives Society International, Annual Meeting in San Diego, California

 

11/7/17

Setting Up A Website

Panelist on this webinar hosted by Financial Poise as part of a series entitled Intellectual Property Issues for The Newish Business

 

Feb-May 17

Patent Best Practices: 'Insiders' Advice for In-House Counsel

Panelist on this webinar hosted by Financial Poise on Patent Application Drafting, part of the webinar Series entitled Patent Best Practices: Insiders' Advice for In-House Counsel

 

4/24/17

Is IP a crucial leverage for start-ups?

Panelist at this session at the LESI Annual Conference directed to IP Revolution? Scenarios for the future, Paris, France, 23-25 April 2017

 

10/25/16

Patent and Technology Licensing in High Tech – Recent Trends

Organizer and moderator of this panel at the LES Annual Meeting in Vancouver directed to Patent and Technology Licensing in High Tech – Recent Trends

 

October 2016

Buying & Selling IP

Panelist on this webinar hosted by Financial Poise

 

 

OTHERS

 

Patent Operations and Management

  • Patent Management & Strategies for Building an In-House IP Mgmt. Cell
    • Int’l Conf. on IPR, Mumbai, India, January 2007
  • Patent Portfolio Mgmt; IP Valuation – General Principles
    • EU-India Training on IP Mgmt. Practices, Bangalore, India, November 2006
  • Managing the Patent Process in a Software Company
    • AIPLA Spring Meeting, Philadelphia, PA, May 2005
  • Integrating IP & Business
    • IP Law & Business, San Francisco, CA, May 2005
  • Managing IP at Oracle
    • Waseda & Keio Universities Joint Study Group, Redwood Shores, California, March 2004
  • Panelist, Martindale-Hubbell’s Counsel To Counsel Forum
    • Seattle, Washington, October 2003
  • Patent Operations at Oracle
    • Association of Corporate Patent Counsel, Summer Meeting, Albuquerque, New Mexico, June 2003
  • The Invention and IP Creation Process
    • Digital Media and IPR Program of Association of Finnish Lawyers, Redwood Shores, California, March 2003
    • UC Berkeley, Haas Graduate School of Business, Guest Lecture, February 2003

 

 

Patent Monetization and Transactions (Patent Marketplace, Sales, and Licensing)

  • Mobile IPR Strategy
    • 2013 Wireless & Mobile Congress, Santa Clara, CA, Sept. 2013
  • IP Markets:  Transactions that Bridge the Invention Gap
    • University of New Hampshire School of Law, October 2011, & LES DC Chapter, July 2011
  • The Marketplace for Ideas:  Overview of Patent Licensing
    • MIT Independent Activities Period Lecture Series, Cambridge, MA, January 2011
  • Second to None:  The Business of Buying, Selling and Licensing IP Rights
    • 48th Annual Conference on Intellectual Property Law, The Center for American and International Law, Dallas, TX, November 2010
  • IP Monetization:  What You Need to Know About Emerging Deal Structures & Strategies for Commercializing Patent Portfolios
    • LES San Francisco and Washington DC Chapter Meetings, February/July 2010
    • Silicon Valley Intellectual Property Law Association, Mountain View, CA, May 2010
    • IQPC IP Conference, Munich, Germany, March 2010
    • IPR Managers Forum, Tel Aviv, Israel, August 2010
  • Bundling of IP Rights, IP Licensing: Challenges and Solutions
    • 2009 ABA/Berkeley IP Antitrust Conference, February 2009
  • Patent Plaintiffs – Hot or Not, Some Statistics on Patent Litigation
    • NASABA Annual Convention, Chicago, IL, June 2008
  • Patent Commercialization Trends in the ICT and Consumer Electronics Industries
    • LES India Seminar, October 2006
  • IP Value Extraction – Examples in the Software/IT Industry
    • ACPC Summer Meeting, Cambridge, MD, June 2005
  • What is Your Patent (and other IP) Worth?, Panel Member
    • Third Annual Advanced Patent Law Institute, Sponsored by the Berkeley Center for Law and Technology and the Univ. of Texas Law School, San Jose, California, December 2002

 

Legal Issues

  • The Continuing Evolution of the Patent Licensing Landscape – An Overview Of How the Federal Circuit, Supreme Court and Legislation Have Profoundly Affected Patent Licensing
    • University of San Francisco Law School, October 2015
    • Seoul National University, November 2015
    • LES DC Chapter Meeting, Washington DC, October 2014
    • LES Software Committee Meeting, February 2014
  • AIA Section 18 & Business Method Patents
    • LES DC Chapter Meeting, Washington DC, July 2012
    • LES Winter Meeting, Anaheim, CA, March 2012
  • Patent Reform at the PTO: Streamlining or Substantive Change?
    • U.C. Davis Symposium, The Perfect Storm of Patent Reform?, U.C. Davis School of Law, November 2008
  • Overview of Patentability of Computer Software in the U.S.
    • IPR Summit 2008, International Conference on IPR, Chennai, India, February 2008
  • The Changing Indian IP Landscape
    • LISA Forum Asia, Beijing, China, March 2007
  • Basics of Licensing & Technology Transfer
    • Global Institute of Intellectual Property, Indian Institute of Technology, Delhi, March 2007
  • International Patent Prosecution; A Brief Overview of Software Patents, Platforms and Standards, Patent Strategy
    • WIPO Program on Patent Drafting, Indian Institute of Technology, Mumbai, April 2006
  • Claim Construction: Issues Specific to Information Technology (IT) Patents
    • Int’l Conf. on IPR, Bangalore, India, January 2006
  • Debater - 35 U.S.C. 271(f) reform
    • ABA Section of IP Law Spring Meeting, San Francisco, CA, May 2005
  • Limiting Injunctions for Parties That Are Not Technology Users
    • IPO Conference – Patent Trolls and Patent Property Rights, Washington, D.C., March 2005
  • Panelist, Various Panels on Patent Law
    • IPR Summit, Kolkata, New Delhi and Mumbai, India, January 2005
  • Moderator, Risks and Issues in Open Source
    • Intellectual Property Owners Annual Meeting, Boston, Massachusetts, September 2004
  • Key Issues, Deal Points and Drafting Tips for Hybrid IP Licenses
    • Law Seminars International, San Francisco, California, April 2004
  • IP Rights in Joint Development
    • FindLaw Corporate Counsel/Glasser Legal Works Seminar, Stanford University, Palo Alto, California, June 2003
  • Negotiating Technology Outsourcing Agreements – Additional Planning for Transactions Involving Patents
    • Law Seminars International, San Francisco, California, October 2002
  • Panel Member, Implications of Festo-Vornado
    • Practicing Law Institute, September 2002
  • Business Method Patents: A Software Vendor’s Perspective
    • Business Methods Partnership Meeting, U.S. Patent and Trademark Office, July 2002
  • Negotiating IP Rights in Corporate Transactions
    • AIPLA Mid-Winter Meeting, Phoenix, Arizona, January 2002
  • E-Commerce and Business-Model Patents
    • R. Krebs & S Prasad, American Corporate Counsel Association (San Francisco Chapter) Meeting, San Francisco, California, July 2001
  • Selected Topics in Standards Setting Bodies
    • AIPLA Spring Meeting, May 2001, San Francisco, California

 

 

Other

  • Beyond Licensing: Successful New Models for Realizing Return from Software
    • Commercializing Software IP: High Tech, Digital Health, and Educational Content, U.C. Berkeley, November 2013
  • Doing Business in India
    • LES International Conference, Zurich, Switzerland, June 2007
  • Panelist, Does the Patent System Work for the IT Industry?
    • Intellectual Property Law & Technology Summit, Association for Competitive Technology, Cambridge, MD, April 2005
  • Developments in Databases and Knowledge Management
    • International Bar Association 2003 Annual Meeting, San Francisco, California, September 2003.
  • Ethics in Engineering
    • Featured Speaker, Boston University College of Engineering, Order of the Engineer Ceremony, February 2003

 
BARCELONA
BRUSSELS
GENEVA
KAMPALA
SEATTLE
SILICON VALLEY
SINGAPORE
WARSAW
WASHINGTON