Robert T. Neufeld (Bob)

• Negotiating joint development agreements and intellectual property license agreements for an international semiconductor company.
• Negotiating intellectual property terms of multi-billion dollar data center construction agreements.
• Drafting and negotiating software license agreements and technology services agreements for mobile payments technology.
• Managing ex parte and inter partes reexamination proceedings that successfully invalidated several asserted patents in parallel with a complex patent infringement suit involving Java-based software technology.
• Managing the preparation and prosecution of a client’s patent portfolio comprising several hundred U.S. and foreign patent applications involving electrical, optical and mechanical technologies.
• Preparing and prosecuting over 60 U.S. and foreign patent applications for a client’s patent portfolio covering wireless communication technology.
• Counseling a medical device company concerning the acquisition and enforcement of patent rights in technology relating to vascular procedures.
• Preparing patent non-infringement opinions and recommendations for “design around” options for a large financial institution.

Bob Neufeld focuses on developing intellectual property portfolios and counseling clients on intellectual property and technology transaction matters. With more than 25 years of experience in a broad range of intellectual property matters, Bob provides clients with practical, business-focused guidance involving the protection of their intellectual property rights.  

In his IP portfolio work, Bob works with clients on securing and managing patent, copyright, trademark, and trade secret assets.  With a particular emphasis on patent application and prosecution experience, Bob has obtained hundreds of U.S. and foreign patents for his clients across a variety of technical fields. These fields include computer software and hardware; wireless communications; renewable energy sources including hydrogen, wind, solar, and biofuels; food and beverage formulations; optics; mechanical devices; medical devices; and financial services.

With respect to his technology transactions practice, Bob leverages his deep IP portfolio experience to negotiate favorable outcomes for his clients.  Bob's technology transactions practice encompasses a variety of commercial matters, including intellectual property license agreements, joint development agreements, software and technology licenses, and IP terms in mergers and acquisitions.  In association with his transactions practice, Bob also regularly performs due diligence concerning IP assets and provides opinions on IP matters.

A writer and lecturer on IP law subjects, Bob was recognized in 2015 by Legal 500 for his patent prosecution practice.