Jon Grossman

Biography

For over 30 years, Jon Grossman has practiced in the areas of patent law, licensing work, and copyright with an emphasis on computer software issues, including:

  • significant commercial licensing experience encompassing all aspects of contracting, including inbound and outbound licenses, development agreements, Internet contracting, and copyright related agreements
  • significant government contract licensing experience concerning issues regarding technical data rights and subject inventions
  • working closely with corporate teams on the IP side of M&A transactions and handling the transfer of intellectual property rights for business acquisitions
  • providing clients a full range of IP counseling with a business focus in the areas of strategic acquisitions, outsourcing, and joint ventures and enforcement
  • assisting patent clients overcome subject matter eligibility rejections at the U.S. Patent Office in the post-Alice context

Additionally, he has worked closely with clients in obtaining financing from venture capitalists.

Jon also has extensive experience regarding Internet legal issues including IP enforcement and defense issues.

Jon is recognized as a leader in issues concerning business method patent protection and intellectual property opinion making. He co-authored Intellectual Property Legal Opinions, Second Edition (Wolters Kluwer Law & Business), the leading treatise on IP counseling, which has been updated annually since 1999.

Outside the Firm

Jon is Co-President of the Adat Shalom Reconstructionist Congregation in Bethesda, MD (2016–2018) and was a Board Member from 2014–2016.

He enjoys section hiking the Appalachian Trail. He is an avid runner and enjoys bike commuting.

Experience

  • Developed and negotiated licensing program for medical software company (concerning AIA compliance) with large insurance and hospital systems.
  • Led negotiations with the U.S. Army concerning IP technical data and subject invention licenses in a $5 Billion acquisition.
  • Represented several private equity clients in the purchase and sale of portfolio companies having multinational IP assets and ongoing IP litigations.
  • Assisted Fortune 50 manufacturer in negotiating successful international joint development arrangement with leading consumer product company.
  • Works with numerous international software patent prosecution clients in overcoming subject matter eligibility refusals.
  • Develops intellectual and commercialization strategies for clients

News & Views

See all News and Views

Recognitions

  • 2011–2018, Copyright Law and Patent Law in Washington, D.C., listed in Best Lawyers in America©
  • 2012–2015, and 2017, listed in IAM Patent 1000
  • 2013–2017, “IP Star,” listed in Managing IP (“MIP”) Magazine
  • 2013–2016, listed in Washington, D.C. Super Lawyers
  • 2017, listed in Capital Pro Bono Honor Roll

Affiliations

Professional Activities
  • Adjunct Professor, Washington College of Law, American University, teaching IP classes, including IP Protection of Mobile Apps.
  • Co-Author, Intellectual Property Legal Opinions, Second Edition
  • Lecturer, DC Bar Small Business Workshops

Credentials

Admissions

  • District of Columbia
  • Pennsylvania
  • Supreme Court of the United States
  • U.S. Patent and Trademark Office

Education

  • American University, Washington College of Law, JD
  • Johns Hopkins University, MS
  • University of Chicago, BA