Overview: 30 Years of global intellectual property practice and business steering expertise
Preparation and prosecution of over sixty (60+) issued U.S. and international patents worth hundreds of millions in product sales and sustained competitive advantage.
Complex IP transactions including contract negotiations, document preparation, management, and audit leadership.
International trademarks, trade dress, domain names, internet rights, and branding including selection, clearance, adoption, use, and marketing guidance.
Freedom-to-operate analysis and opinions to minimize intellectual property (IP) risk and reinforce institutional compliance on both sides of the issues.
Collaborative and sponsored development agreements that work and benefit both parties.
Formation of domestic and international alliances, partnerships, consulting and joint venture agreements.
International IP strategy and tactical best practices expert.
Strategic IP portfolio development, M&A, management, valuation, and monetization for sustained competitive advantage.
Enterprise resource and capability allocations including IP budgets and targeted IP spending.
IP rights infringement opinions, enforcement, and defense.
Product design and international design clearance and certification.
Analytics and metrics for value chain performance and P&L fitness tracking and trending.
Inter-cultural IP team building and company leadership.
IP and technology export licenses and proper tactical use of defensive publications.
IP education & training programs for staff and new hires.
Copyright clearance and enforcement, derivative works, author/publisher policies & rights guidance.
Much more.
Freedom-to-Operate Achievements.
CompetitorPatent Avoidance – An in-depth prior art review and patent claim construction study of a competitor's blocking patent resulting in a confirmed repetitive annual savings of $600K.
Clearance - Led and directed all domestic and international trademark selection, adoption, and use; capture of trade secrets; copyright clearances and open-source software usage; and tactical defensive publications.
Worldwide IP filings and budget management – Prepared and filed numerous high-profile convention trademark applications Patent Cooperation Treaty (PCT) and convention patent applications.
Marketing - Reviewed and approved international marketing materials for trademark and copyright usage associated with global New Product Introduction (NPI) launches at trade shows to mitigate risk, ensure institutional and regulatory compliance, brand promotion, approval of technology exports, and avoidance of liability for improper messaging.
Technology Incubation – Conducted and analyzed numerous global prior art searches and produced IP landscaping maps for enhanced visibility of markets.
NewProductIntroduction – I helped spearhead the global award-winning GE Adventure Series.
Royaltyauditdefense – Defense of an $8M royalty audit claim. After significant due diligence and technology mapping, the confirmed result was a proven $6M overpayment in our favor.
Product and Technology Development Agreements.
Softwaredevelopment – $40M exclusive license with Purdue and Notre Dame for co-branded 4D holographic imaging software and systems.
Internationalpartnerships – Negotiated and drafted numerous international development and beta-test agreements with German manufacturers for high throughput digital imaging technology.
Pioneeringdevelopmentagreement – A first-of-a-kind “Future Technology” exclusive software license for enhanced 3D and 4D imaging software for General Electric (GE).
Academic research partnerships – Formed and nurtured industry-leading research partnerships with UCLA (Nuclear Medicine-Mike Phelps, director) and Caltech (Heath Labs-Richard Heath, director).
Research Agreements – $20M long-term comprehensive R&D agreement with the University of Wisconsin (UW).
Deal Formation, International Collaborativedevelopment – 10M EUR software development agreement with Erasmus University, The Netherlands, that began with a verbal “you put in 5, I’ll put in 5, and let’s work together” cocktail party handshake agreement between the Presidents of GE and Erasmus University.
Business Operations and Expansion (M/A).
Sale/Purchase of a business unit and related IP portfolio monetization -$580M sale of GE's homeland security business to Safran, SA (France) including a substantial royalty-bearing license of software and related IP.
Sale of a Nasdaq traded Company - Chief IP Counsel on the sale of CTI Molecular Imaging (Nasdaq: CTMI) to Siemens.
Numerous stock and asset purchases of businesses, capital equipment, and global software systems (GE, Quad/Graphics, CTI, and others).
Businessdevelopment – As the sole in-house counsel for the Global Design team for all of GE, I helped grow the business segment from an unranked position with 9 employees to an award-winning corporate design shop with 69 employees, 4 global locations, and ranked 4th in the world. My work included engagement with GE Aviation requiring DOD security clearance.
TradeSecretValuationandAcquisition (CEO Mission-Critical Award plus bonus) – Performed all of the technical due diligence and ownership clearance related to a $41M acquisition of trade secrets, including the valuation pitch to the Wall Street bank underwriting the deal.
Equipmentleasing - Formed, directed, and managed “The Leasing Cooperative” (TLC) as a wholly owned company subsidiary. Negotiated and prepared all lease contract documentation (true and finance leases), secured bank lines of credit, spurred secondary market equipment sales, and brokered TLC lease portfolio assets to larger leasing firms.
IP Portfolios: Monetization and Enforcement.
Analytics and valuation – Developed proprietary valuation algorithms used for valuing aging patent assets. My algorithm-driven program was instrumental in determining the “relative strength” of competing IP portfolios.
IPMonetizationalliance – Co-branding partnership strategy with the Wisconsin Alumni Research Foundation (WARF) for software licensing.
Industrylicensesandconsultingagreements – Negotiation and drafting of industry-leading global technology cross-licenses with Hitachi, Toshiba, Siemens, and flagship consulting agreements with academic luminaries.
International PatentEnforcement – Successful patent enforcement in Scotland covering our company's most important, most valuable, scintillator crystal technology.
Business Management and Governance.
Management and Board Participation - Prepared and presented the Global Session IP reports for the division President, and presented quarterly quality updates for senior management and the board of GE/GEHC.
Other LeadershipInteraction - Interacted weekly with the most senior leadership to discuss highly confidential development transactions, due diligence relating to acquisition targets, coded development projects, pre- and post-M/A integration activities, and litigation.
Corporatecommittees - Formed and led innovation and trade secret loss prevention programs.
Global IP Budgets - Developed and implemented best practices for legal spending, including international IP protection, procurement, and enforcement budgets.
Representation before regulatory authorities – Representation before the Nuclear Regulatory Commission (NRC) on reporting, investigations, and inquiries.
Prior Employment and Affiliations
OREGON STATE UNIVERSITY, College of Business - International Business Lead Instructor; AACSB Course Coordinator
GE and GE HEALTHCARE (GEHC) - Senior Counsel
QUAD GRAPHICS (QUAD) - Chief IP Counsel and Associate General Counsel
CTI MOLECULAR IMAGING (CTMI) and SIEMENS HEALTHCARE, USA - Chief IP Counsel and Assistant General Counsel
BOULDIN CORPORATION - General Counsel and Chief IP Counsel
WASCHER & THOMAS, LLC - Founder, owner, and managing partner
BOULT, CUMMINGS, CONNERS & BERRY, Nashville, TN - Lead Attorney, IP Practice Group
SMITH & NEPHEW, Memphis, TN - Patent Attorney
Advanced Training, Awards, Education, and Personal.
GE Leadership School Graduate, Crotonville, New York.
GE President’s Award; IP Strategy Award; Transactional Rigor Award, others.
J.D., Law 1989, University of Oklahoma, Norman, OK.
B.S., Nuclear Engineering 1986, University of Illinois, Urbana, IL.
Professional Mediator.
US Patent and Trademark Office, Patent Attorney since 1991, reg no. 35,404.
We use cookies to analyze website traffic and optimize your website experience. By accepting our use of cookies, your data will be aggregated with all other user data.