Peter J. Davis

Intellectual Property Litigation

• Prosecute and defend clients in patent infringement litigations in U.S. courts across a broad range of technologies, including agribusiness, biotechnology, pharmaceuticals, industrial chemicals, medical devices, heavy machinery, software, and household devices and appliances
• Coordinate U.S. and international patent enforcement activities for clients with IP assets abroad
• Conduct and manage intellectual property litigations, including plaintiff pre-filing investigations and defendant defense investigations; develop case strategy, including discovery, pre-trial and trial strategies; prepare and manage litigation budgets; manage litigation teams; work with joint defense groups
• Advise clients on costs and benefits of intellectual property enforcement litigation in U.S. and international courts
• Prosecute and defend clients in trademark and trade dress enforcement litigations in U.S. courts
• Prosecute and defend clients in copyright litigations in U.S. courts
• Prosecute and defend clients in trade secret litigations in state and U.S. courts

Patents

• Former patent examiner at U.S. Patent and Trademark Office
• Prepare, file and prosecution patent applications across a broad range of technologies
• Manage U.S. and international patent prosecution portfolios for sole inventors, as well as small, medium and large companies
• Work with inventors and companies to devise cost-effective strategies for filing patent applications and quickly obtaining patent protection
• Negotiate with patent examiners; pursue patent appeals to Board of Patent Appeals and Interferences
• File and prosecute reissue patent applications; reexaminations
• Advise clients on patentability, patent infringement, freedom to operate issues
• Advise and discuss with clients relative benefits and costs of patent protection
• Develop patent portfolio strategies for new and developing companies
• Develop proprietary patent landscape product and service
• Work with clients on developing patent policing, enforcement, and monetization strategies
• Advise on and assist with the development of patent department and patent procedures
• Provoke patent interferences; conduct and manage patent interferences through the priority phase to final judgment and including Section 146 actions
• Prosecute and defend patent infringement litigations in federal courts

International Intellectual Property

• Manage international patent and trademark portfolios for companies of all sizes
• Work with clients to develop and execute cost-effective and business targeted international protection strategies
• Coordinate intellectual property enforcement actions across multiple jurisdictions for clients having worldwide IP portfolios

Intellectual Property & Technology

• Advise clients on and provide services to clients in connection with all aspects of their businesses that relate to technology and intellectual property
• Advise on and assist clients with development of IP strategy, including technology monetization, enforcement, licensing, and litigation strategies

Transactional Intellectual Property

• Negotiate and draft transaction agreements primarily relating to or including intellectual property issues, including but not limited to employment agreements, supply agreements, joint development agreements, purchase agreements, confidentiality/non-disclosure agreements, joint venture agreements, termination agreements/letters, cease and desist letters, and settlement agreements
• Conduct/manage IP due diligence for corporate transactions

Copyrights

• Advise clients on copyrightability and copyright enforcement
• Prepare and file copyright applications
• Prosecute and defend copyright litigations in federal courts

Internet and E-Commerce

• Advise clients on intellectual property issues arising from internet usage and e-commerce
• Prosecution and defend clients in federal court litigation relating to claims arising out of internet usage and e-commerce
• Prepare and file patent applications, trademark applications and copyright applications to protect client innovations, trade names and works of authorship relating to internet and e-commerce technology and businesses

Licensing & Technology Transfer

• Advise on and assist clients with development of IP strategy, including technology monetization, enforcement, licensing, and litigation strategies
• Negotiate and draft licensing and technology transfer agreements between private commercial, non-profit, university, and government entities
• Conduct/manage due diligence for licensing and technology transfer transactions

Open Source, SaaS & Other Innovative Distribution Models

• Advise clients on intellectual property issues relating to use or distribution of Open Source, Software As A Service, and other software distribution models

Technology Start-ups

• Advise technology startups on cost-effective strategies for building, documenting and protecting critical intellectual property
• Develop collaborative programs for reducing patent and prosecution costs for technology start-ups
• Work with incubators and VC firms to advise technology start-ups to assess patentability and freedom to operate for new technologies

Trade Dress

• Advise clients on protectable elements, policing and enforcing of Trade Dress
• Prosecute and defend Trade Dress litigation in federal courts

Trade Secrets

• Advise clients on elements and relative benefits of protecting innovation and information through Trade Secret
• Advise clients concerning protecting and policing Trade Secrets, both in context of employer/employee relations and between competitors
• Prosecute and defend Trade Secret litigation in federal courts

Trademarks, Domain Names and Other Brand Protection

• Advise clients on requirements and benefits of Trademark protection
• Advise clients on policing and enforcement strategies for maintaining Trademark protection
• File and prosecution Trademark applications before the U.S. Patent and Trademark Office
• Prosecute and defend Trademark litigation in federal courts

Computer Software & Hardware

• Advise clients on protectable elements of software and hardware, including relative benefits of patent, copyright, and trade secret protection
• Prepare and file patent application for client software and hardware inventions
• Prepare and file copyright applications for client software works of authorship

Life Sciences

• Advise life sciences inventors and companies concerning patentability of life science-related inventions and innovations
• Develop patent portfolio-building strategies with new and developing life sciences companies
• Work with life science clients to devise cost-effective strategies for filing for and quickly obtaining patent protection on life science-related inventions
• Advise life science companies on relative benefits, costs, and risks of protecting life science innovations with patent protection versus trade secret protection
• Advise life science companies on patent infringement, patent validity, and freedom-to-operate issues
• Advise life science companies on patent landscapes for selected life science technologies

Cyber Security and Information Privacy

• Advise software and network security companies concerning patentability of their inventions and innovations
• Develop patent portfolio-building strategies for cyber/network security companies
• Work with clients to devise cost-effective strategies for filing for and quickly obtaining patent protection on cyber/network security inventions
• Advise cyber/network security companies on relative benefits, costs, and risks of protecting innovations with patent protection versus trade secret protection
• Advise cyber/network security companies on patent infringement, patent validity, and freedom-to-operate issues
• Advise companies on patent landscapes in cyber/network security technologies

Clean Energy Technology

• Advise clean energy companies concerning patentability of their inventions and innovations
• Develop patent portfolio-building strategies for clean energy companies
• Work with clients to devise cost-effective strategies for filing for and quickly obtaining patent protection on clean energy inventions
• Advise clean energy companies on relative benefits, costs, and risks of protecting innovations with patent protection versus trade secret protection
• Advise clean energy companies on patent infringement, patent validity, and freedom-to-operate issues
• Advise companies on patent landscapes in clean energy technologies

Technologies/Industries

• Biotechnology, pharmaceuticals, medical devices
• Materials science, chemistry
• Electronics, microlithography, optics
• Heavy and light machinery; mechanical devices
• Software, internet, network security, business methods
• Household and personal products

Co-Author: 4th Circuit Decisions in Intellectual Property, Annual Review of Developments in Business and Corporate Litigation, Committee on Business and Corporate Litigation of the ABA; 2007, 2008, 2009 Editions

Instructor: 2012 Patent and Intellectual Property Law and Practice Summer Institute, Center for Advanced Study and Research on Intellectual Property, July 30-31, 2012

Presenter and Lecturer: Intensive Course in Pharmaceutical and Biotech Patent Opinion Writing, American Conference Institute, Cambridge, MA; Atlanta, GA, 2008

Guest Lecturer: University of Virginia Darden School of Business E-Boot Camp, Charlottesville, VA, 2008, 2009, 2010

Guest Lecturer: Center for Advanced Study & Research on Intellectual Property, Patent and Intellectual Property Law and Practice Summer Institute, 2009, 2010