JusTech Law
Services
Standards Essential Patents
Services
- Draft and negotiate patent licenses involving SEPs
- Mediate F/RAND licensing disputes
- Serve as an expert witness in SEP-related litigation
- Advise on SEP disclosure obligations
- Advise clients on SEP-related patent pool agreements
Standards Organizations
Services
•Strategic counseling on the formation and launch of new consortia
•Serve as General Counsel to standards organizations
•Represent clients participating in standards organizations
•Draft and evaluate organizational governance documents including Intellectual Property Rights Policies
•Advise on Standards Essential Patents (SEPs) and Fair Reasonable and Non-discriminatory (F/RAND) Licensing
Open Source Software
Services
- OSS due diligence and remediation
- Serve as General Counsel to OSS communities
- Strategic counsel on the formation and governance of OSS communities
- Counsel on the inclusion of OSS in standards and the development of OSS standards
- Develop and implement OSS training and compliance programs
Technology Transactions
Services
- Draft and negotiate numerous types of agreements such as consulting, joint development, confidentiality, IP licenses, end user licenses, XaaS hosting, equipment purchase agreements, all types of software agreements, technology transfer agreements
- Develop deal templates for repeat transactions and train corporate personnel to use templates reducing legal expenses
- Work with clients to identify appropriate deal structures and terms, especially for unique and/or complex deals
- Draft term sheets, memorandum of understanding, and letters of intent
- Lead or support IP due diligence in acquisitions, financing, IPOs, mergers and divestitures transactions
Patent Transactions
Services
- Draft and negotiate all types of patent agreements
- Review and provide advice concerning patent rights granted in existing agreements
- Develop portfolio licensing programs
- Work with clients to establish patent royalty and license fee structures appropriate for our clients’ patented technologies
- Provide support and counsel to clients using patent brokers to purchase or divest patent assets
Mediation
Michele Herman Added to List of WIPO Mediators. I am honored by WIPO’s recent invitation to join its Arbitration and Mediation Center’s List of Mediators. WIPO has a growing caseload of disputes it is helping parties resolve through its Arbitration and Mediation Center, and more importantly, a 70% success rate in settling disputes through mediation. See https://www.wipo.int/amc/en/center/caseload.html. Recently, WIPO and the USPTO signed a memorandum of understanding to: “Cooperate on activities that will lend efficiency and effectiveness to the resolution of disputed standard essential patent matters by leveraging existing WIPO Arbitration and Mediation Center and USPTO resources.” See https://www.uspto.gov/about-us/news-updates/uspto-and-wipo-agree-partner-dispute-resolution-efforts-related-standard. I hope my unique experience involving standards essential patents and related FRAND negotiations, as well as software and patent licensing matters can be put to good use as a WIPO mediator.
How We Work
Our Commitment: JusTech Law is committed to ensure that our clients receive prompt, effective and practical services that meet their needs. We do this through the expertise of our attorneys, the firms we partner with, and the skilled and dedicated attorneys who work with us.
Our Expertise: JusTech Law was founded by Michele Herman, a patent and technology licensing attorney with over 30 years of technical, business, and legal experience. As an attorney, Michele has served as both in-house counsel and in private practice. She has counseled both small and large clients, as well as communities and organizations that develop standards, open source software, and other collaboratively-developed technical materials.
Michele is an electrical engineer, a registered patent attorney, and an experienced negotiator. She has served in leadership roles in the American Intellectual Property Association, the Section of Science and Technology in the American Bar Association, and the Intellectual Property Owners Association. She has taught standards and open source courses in Seattle area law schools. Michele is a frequent speaker and author on the topics of industry standards, open source software, and intellectual property transactions. She is a trained mediator and has served as an expert witness.
Our Partners: JusTech Law partners with firms of all sizes to provide JusTech’s clients with a full range of legal and business services. We develop relationships with experts in different areas of the law to ensure that our clients receive holistic, comprehensive advice. We are always looking to expand our relationships. If you have expertise in Delaware nonstock corporate matters, international trade, tax, trademark registration, employment law or another complementary area of the law, please contact us about potential opportunities to work together.
People and Careers: Like all small law firms, managing workloads while client work ebbs and flows is not always easy. We ensure that our clients receive prompt and competent service even during those flows. JusTech hires attorneys who we supervise and train to assist in matters on a case-by-case basis. If you have some transactional experience or experience with either standards or open source and are interested in opportunities to work with seasoned attorneys who specialize in standards, open source, or technology transactions on a contract-basis, please reach out.
Representative Experience
- Negotiate patent licenses for investment fund holding patent portfolios involving life sciences technologies
- Third party software remediation and risk analysis for ad software using code scans results
- Serve as a testifying expert witness in litigation involving violations of patent disclosure policies involving communications technology standards
- General counsel to nonstock membership community promoting the adoption of open disaggregated telecom infra structure through the development of new isolations by hosting collaborative lab projects, overseeing field trials, and through training and educational programs
- Develop deal terms for med-tech startup divesting business including patents and know-how to corporate acquirer
- Draft and negotiate educational content creation and course distribution system agreements
- Develop opensource compliance program for mid-sized software company that uses code scanning tools
- Counsel large cloud software client in connection with open source community’s development of standards
- Work with patent pool administrators on behalf of a consumer electronics client and an enterprise software client to avoid audit non-compliance determinations
- Develop open source compliance process for an open source community developing wireless communications testing software
- Negotiate contracts with international government for the funding of a multi-collaborator project involving Open RAN technology
- Develop legal framework for exclusive patent licenses in different fields of use for series of spin-out companies involving metamaterials applications
- General counsel for nonstock member organization developing standards and certification programs for RFID labels for pharmaceutical industry
Endorsements
“Michele is a longtime trusted resource and advisor for all matters related to intellectual property and licensing. She offers her clients deep expertise in the complexities of patent law and is very efficient in delivering wise, effective and actionable advice. I highly recommend her services.”
Todd McIntyre, Manager, Grey Sky Venture Partners
“I worked with Michele for several years on standards and open source matters. Her input is always insightful, creative, and overall impressive. She is responsive, timely, and delivers high quality work product. I highly recommend her.”
Valentina Boyet, Senior IP Counsel, SAP
“Michele has been a true partner helping us navigate numerous unique and complex legal matters involving technical community collaborations. She is a team player who finds efficient solutions for some of the most complicated transactions. Michele’s expertise has been invaluable.”
Kim Fullerton, Chief Operating Officer, Telecom Infra Project
"Michele’s deep knowledge in the area of standards, open source, and technology licensing makes her a unique asset to virtually any high technology practice that needs to have a global impact. Furthermore, she has excellent communication skills and is a strategic thinker by nature."
David Marr, Vice President and Legal Counsel, Qualcomm Technologies, Inc.
Contact
Michele Herman
michele@justechlaw.com
(425) 985-9579
