Terminating Patent Licenses: Key Considerations and Best Practices

John Augustyn successfully represents clients in high stakes intellectual property litigation, agreements, client counseling, and prosecution.  Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that IP and business issues require creative and cost effective legal solutions. He has authored several articles and chapters for books, has appeared on multiple television and radio programs, has taught law school classes, and has provided over 30 CLE programs to thousands of corporate and outside counsel.  His legal success has been recognized by selection to Best Lawyers, Super Lawyers, IAM Patent 1000, Top 100 High Stakes Litigators, Fellow to Litigation Counsel of America, and other honors. Please click on his photo above for more information.

Litigation


John has been lead counsel in patent and trade secret litigations throughout the country at the trial and appellate levels. He also has been lead counsel in Post Grant proceedings at the USPTO and coordinated post grant proceedings in other countries.  In addition, he has litigated cases at the International Trade Commission. His litigation experience has involved several areas, including electronics, magnetics, sensors, control systems, medical devices, automotive, and consumer products.

Opinions


John counsels and renders opinions on patent infringement and invalidity including major product launches in competitive patent landscapes. These opinions often involve large patent families with multiple US patents and with existing litigations and patent office proceedings throughout the world.

Patent Prosecution


He has extensive experience in formulating patent strategies and managing patent portfolios. John manages the US and non-US patent prosecution for several international corporations. He has prepared or supervised the preparation of over 1000 US original patent applications and oversaw the prosecution of over 3000 non-US patent applications.

Due Diligence


John performs due diligence for mergers and acquisitions. The due diligence involves an analysis of the patents, trademarks, trade secrets, licenses, agreements, products, services, manufacturing processes, software, marketing, and standards by standard setting organizations.

IP Agreements


He successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee, including patent licenses, technology licenses, trade secret agreements, joint venture agreements, trademark agreements, and research and development agreements.

Trade Secrets


John advises clients on trade secret matters including: litigating trade secret cases, negotiating trade secret agreements, advising clients on the best techniques for protecting their trade secrets, and helping clients decide whether to use trade secret versus patent protection.

Mr. Krieger is a leading patent strategist with more than 25 years of experience guiding clients through complicated intellectual property challenges. Known for his ability to distill scientifically intricate issues into clear, actionable strategies, Mr. Krieger is highly sought after for conducting freedom-to-operate (FTO) analyses in the chemistry, biochemistry, oil and gas, mechanical systems, and medical device fields. He is equally adept at evaluating patents for validity and conducting non-infringement assessments, helping clients navigate dense landscapes of competitor patents. In addition to client counseling, Mr. Krieger is also an active PTAB litigator, having represented both petitioners and patent owners in dozens of PTAB proceedings. His outstanding record has set him apart as one of the most effective PTAB advocates in the country. Mr. Krieger also handles district court and ITC litigation, and patent prosecution matters across a range of technical fields. He chairs the American Chemical Society (ACS) Committee on Intellectual Property and is Chair-Elect of the Colorado Section of ACS. Mr. Krieger teaches a course on PTAB litigation as an adjunct professor at the University of Denver Sturm College of Law and also lectures and publishes frequently on various intellectual property topics, including PTAB litigation, trade secrets, the America Invents Act, and the “on sale” bar to patentability.