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Attorneys  

Jeffrey C. Johnson

Jeffrey Johnson is a partner experienced in the transactional aspects of technology and intellectual property exploitation (patents, trade secrets, trademarks and copyright) including, in particular, all aspects of mergers and acquisitions, joint ventures, strategic alliances, joint development and marketing agreements, private placements and licensing in the biotech, entertainment, Internet, pharmaceutical, software and telecommunications industries. 

Jeffrey typically focuses on transactional matters principally involving intellectual property or goods and services the value of which are largely attributable to intellectual property. Representative assignments include:

• Representation of Lady Gaga in her investment in The Backplane, as reported in The New York Times on June 6, 2011
• Representation of a private equity fund in connection with the acquisition and disposition of patent portfolios and related assets
• Representation of a public biotechnology company negotiating and documenting numerous strategic alliances, research and development collaborations, co-promotion agreements, patent and know-how licenses, and other agreements relating to the development and exploitation of the company's core technologies
• Representation of a public telecommunications company in connection with a strategic reorganization to maximize the value of its patent portfolio and licensed rights
• Representation of a "file sharing" website operator in connection with the negotiation and documentation of a sale of substantially all of its assets to a foreign file sharing website operator
• Representation of a pharmaceutical company's bioinformatics group negotiating and documenting numerous strategic alliances, software development agreements and software licenses, as well as the group's form agreements for the provision of bioinformatics services and the licensing of genomic and proteomic databases
• Representation of a technology-transfer company in connection with the sale of a portfolio of patents governing web-enabled software updating, active desktop and offline browsing
• Representation of a telecommunications company in connection with its sponsored research agreements with various U.S. and foreign educational institutions
• Representation of a health services company in connection with the purchase of an information management business including a large, proprietary prescription drug database
• Representation of a European-based public company in connection with the negotiation and documentation of a strategic alliance providing for the joint development and commercialization of an ASP-based software application useful for the on-line calculation, reporting and remittance of sales tax obligations
• Representation of a public pharmaceutical company in connection with the disposition of certain patent portfolios and related clinical data and know-how useful in connection with small molecule anti-genomic therapeutics and small molecule anti-bacterial therapeutics
• Representation of a privately held company in connection with the exploitation of a large portfolio of music rights via alternative media including Internet portals, mobile virtual networks and other wireless products and services
• Representation of a public biotechnology company in connection with the negotiation and documentation of agreements providing for the further clinical development and commercialization of a Phase I pharmaceutical compound in collaboration with a Fortune 100 pharmaceutical company 

Jeffrey has been an invited speaker and panelist at a variety of public and private events. He is frequently called upon by the press to comment upon intellectual property and other matters. To read samples of such press coverage, please click here.

Previous Positions

• BTG International, Inc.,Vice President for Legal and Patents (1994-99)
• New York City Economic Development Corp., Counsel (1992-94)
• Law Offices of Dr. Mujahid M. Al Sawwaf, Saudi Arabia, Associate (1989-91)

Publications

• Author, Standard Essential Patents—The Transactional Side, BNA’s Patent, Trademark & Copyright Journal (May 2013)
• Co-Author (with Robert deBrauwere and Jill Braibanti), FTC Announces Major Overhaul of Children's Online Privacy Protection Rule, Pryor Cashman Legal Update (January 2013)
• Co-Author (with James Klaiber and Ryan Osterweil), Federal Trade Commission Settles Investigation of Google, Inc.'s Business Practices, Pryor Cashman Legal Update (January 2013)
• Co-Author (with James Klaiber and Benjamin Semel), International Trade Commission Proposes New E-Discovery Rules for Patent Cases, Pryor Cashman Legal Update (October 2012)
• Co-Author (with Robert deBrauwere and Jill Braibanti), Federal Trade Commission Cracks Down on Websites Illegally Collecting Children’s Personal Data, Pryor Cashman Legal Update (October 2012)
• Co-Author (with Robert deBrauwere and Jill Braibanti), FTC Proposes Overhaul to Children's Online Privacy Protection Rule, Pryor Cashman Legal Update (January 2012)
• Author, The AOL Huffington Post Deal:  The End of the Beginning of the Transition?, Acquisition International Magazine (June 28, 2011)
• Author, Evaluating IP Assets in an M&A Transaction, The Deal (May 28, 2010)
• Author, Registered Agents Under The Digital Millennium Copyright Act, Pryor Cashman Legal Update (July 2009)
• Editorial Board member, Internet Law & Business (2008 – present)
• Co-author (with David Parsly), Database M&A - What's Different, 3 Bloomberg Corporate Law Journal 128 (Spring 2008) 
• Co-author, Health Insurance Portability and Accountability Act-Compliant Merger and Acquisition Transactions, 2 Bloomberg Corporate Law Journal 355 (Summer 2007)
• Co-Author, United States, in World Online Business Law (Andrew F. Simpson & N.Stephan Kinsella, eds., 2007)
• Author, Statutes of Limitations Under New Civil Procedural Rules, 12 Middle East Executive Reports 9 (1989)

Speaking Engagements

• Speaker, Contracts and Legal Documents, Bio & Health Tech Entrepreneurship Lab NYC (March 2013)

Distinctions

• Named as one of the "World's Leading Patent and Technology Licensing Practitioners" by Intellectual Asset Management magazine's, IAM Liscensing 250: The World's Leading Patent and Technology Licensing Practitioners (2010-11 editions)
• Named as one of the "World's Leading Patent and Technology Licensing Practitioners" by Intellectual Asset Management magazine's, IAM Patent 1000: The World's Leading Patent Practitioners (2012-13 editions)

Other Activities

• Jeffrey provides pro bono legal services to Arc Finance, Ltd., a not-for-profit dedicated to promoting and expanding access to micro-finance opportunities for poor people and communities around the world