Jon Grossman

Jon Grossman
Senior Counsel
Intellectual Property

Biography

For over 34 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-oriented focus in the areas of strategic acquisitions, technology development, and joint ventures and enforcement strategies
  • Assisting clients on all aspects of computer software intellectual property problems, including software-related contract performance and ownership related disputes
  • Assisting patent clients overcome subject matter eligibility rejections at the U.S. Patent Office in the post-Alice context

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 opinion counseling, which has been updated annually since 1999.

Outside the Firm

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

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

Experience

  • Led negotiations with the U.S. Army and U.S. Postal Service concerning IP technical data and subject invention licenses in acquisitions collectively exceeding $12 billion.
  • Represented 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 products company.
  • Developed and negotiated licensing program for medical software company (concerning AIA compliance) with large insurance and hospital systems.
  • Works with numerous U.S. and international software developers in overcoming subject matter eligibility rejections by the USPTO.
  • Develops intellectual and commercialization strategies for clients.

News & Views

See all News and Views

Recognitions

  • 2011–2024, Patent Law in Washington, D.C., listed in Best Lawyers in America©
  • 2011–2021, Copyright Law in Washington, D.C., listed in Best Lawyers in America©
  • 2013–2021, “IP Star,” listed in Managing IP (“MIP”) Magazine
  • 2017–2021, listed in Capital Pro Bono Honor Roll
  • 2013–2016 and 2020, Washington, D.C., “Super Lawyer” in Intellectual Property, listed in Super Lawyers
  • 2012–2015, and 2017–2019, listed in IAM Patent 1000

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 on various intellectual property topics

Credentials

Admissions

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

Education

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

A description of the standard or methodology on which the accolades are based can be found here.

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