Jon Grossman

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

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