Profil
Paul F. McQuade is a patent attorney with substantial government contracts experience. His practice spans both typical commercial intellectual property, with emphasis on licensing and IP-related transactions, and “government contracts IP” (rights in technical data and software) in the context of U.S. Government research and development and prime and subcontractor agreements. He offers strategic counseling on how best to maintain one’s IP position when doing business with the Government.
His work has included all manner of joint development and collaborative agreements between private parties and with government agencies: R&D procurements, OTA and OTP (prototype) Agreements, CRADAs, Work for Others, Sponsored Research, Cooperative Agreements, software licensing, Evaluation Agreements, and the like. He has defended clients against allegations of trade secret misappropriation and patent infringement both commercially and on government programs, and has brought and intervened in matters related to the Government’s alleged unauthorized use of patented inventions under 28 USC 1498.
He is a frequent lecturer on Intellectual Property in U.S. Government Contracting and is a Vice Chair of the ABA Public Contract Law Section’s Intellectual Property Committee.
Early in his career, Paul served as a clerk to judges on the U.S. Court of Appeals for the Federal Circuit, and the U.S. Court of Federal Claims. These courts have national jurisdiction, respectively, over patent and government contracts appeals and significant government contract and patent claims. After clerking, he served as a trial attorney at the U.S. Department of Justice (Commercial Litigation Branch, Claims Court and Federal Circuit Section) before entering private practice.
Concentrations
- Intellectual property
- Government contracts
- Technology law and related research and licensing transactions
Kompetencje
Doświadczenie
- Conducted intellectual property audits for major corporations, engaged in strategic planning with regard to intellectual property deployment to achieve market share goals.
- Conducted intellectual property due diligence on client acquisitions and divestitures both in commercial and government contractor sectors.
- Defended patent infringement declaratory relief action through dismissal, helped to achieve summary judgment of non-infringement.
- Negotiated some of the largest government research and development contracts awarded by DARPA. Drafted complex teaming agreements, joint development programs, licenses, prime contracts and subcontracts.
- Represented clients in contracts and takings claims before the courts where he once clerked and where he previously served as government defense counsel.
- Litigated cases for both the government contracts and patent sections of the Commercial Litigation Branch. At the U.S. Department of Justice, Paul defended agencies against a wide variety of contract claims and appeals including R&D, cost accounting disputes, defective specification claims, and disputes over ownership rights in intellectual property.
°Certain of the above representations were handled by Mr. McQuade prior to his joining Greenberg Traurig, LLP.
- Trial Attorney, Claims Court/Federal Circuit Section of the U.S. Department of Justice, Civil Division, Commercial Litigation Branch
Sukcesy i wyróżnienia
- Recognized, "IAM Licensing 250: The World's Leading Patent and Technology Licensing Practitioners," Intellectual Asset Management (IAM) magazine, 2010
- Rated, AV Preeminent® 5.0 out of 5.0
- Member, American Bar Association, Public Contracts Law Section, Intellectual Property Committee, (Vice Chair 2021-2022, 2022-2023)
- Member, Federal Circuit Bar Association's Procurement Contracting Study – IP Subcommittee
- Member, Licensing Executives Society
- Board of Directors, The Student Conservation Association, Charlestown, NH 1998-2004
Kwalifikacje
- J.D., University of Tennessee College of Law
- B.S., Bethany College
- U.S. Court of Appeals for the Federal Circuit
- Hon. Lawrence S. Margolis, U.S. Claims Court (now the U.S. Court of Federal Claims)
- District of Columbia
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Federal Claims
- U.S. District Court for the District of Columbia
- U.S. Patent and Trademark Office
- francuski