Robert E. Rudnick

Robert E. Rudnick

Director, Intellectual Property

Mr. Rudnick’s practice broadly focuses on strategic intellectual property transactions, licenses, and client counseling directed to freedom to manufacture and clearance of new products and services, building and leveraging patent portfolios and deploying cost-effective strategies in defending against non-practicing patent entities. He also has experience in developing tailored information security programs and data privacy-related agreements to achieve clients’ business goals and comply with applicable laws and regulations, while managing risk and potential liability. Mr. Rudnick regularly counsels clients in a wide variety of intellectual property matters, including patent procurement and portfolio development strategies; generation of value from patent portfolios; patent and technology licensing; patent clearance studies; patent non-infringement/invalidity evaluations and opinions; corporate mergers and acquisitions; and patent prosecution, especially in the medical device and telecommunication technologies. In addition, Mr. Rudnick has significant business and legal experience negotiating and providing counsel in connection with intellectual property-based transactions, as well as transactions related to data privacy and security. He has also counseled and defended clients from aggressive patent licensing entities such as non-practicing entities (a/k/a “patent trolls”). He spent time in various in-house roles at AT&T and subsequent spin-off companies Lucent Technologies and Avaya Inc.

Mr. Rudnick is particularly well-known for his deep knowledge and skill in connection with drafting complex software and technology license agreements; drafting transaction agreements between corporate partners, vendors, and customers addressing data privacy and security issues; performing intellectual property due diligence reviews; and drafting associated agreements with the goal of appropriately managing a client’s risk under such agreements. Mr. Rudnick has published and presented on many topics related to intellectual property transactions.

Areas of Focus

Licensing and Other Intellectual Property Transactions

The negotiation and drafting of:

    • Intellectual property license and assignment agreements, as well as joint development agreements
    • Intellectual property due diligence review and negotiation of purchase/license agreements
    • Worldwide technology and software licensing, support, and services agreements
  • Internet-related services and software license agreements

Patent Portfolio Development

  • Creation and utilization of intellectual property rights for clients’ businesses to establish meaningful market barriers for entry by competitors

Patent Monetization

  • Analysis of clients’ patent portfolios relative to products and services of others and development of licensing programs for generating revenue

Patent Clearance and Freedom to Operate Studies

    • Advice and counsel to manage risk of intellectual property infringement at launch of a new product or service
  • Clearance and freedom to operate legal opinions based on analysis of patent search results relative to a client’s proposed product or service

Patent Litigation

    • Defense and cost-effective resolution of patent infringement lawsuits initiated by non-practicing entities (a/k/a “patent trolls”)
  • Negotiation and drafting of settlement and licensing agreements meeting a client’s business goals and needs

Corporate Policies and Best Practices

    • Drafting of corporate policies, codes of conduct, and best practices manuals as related to intellectual property
  • Preparation of employee agreements regarding intellectual property, as well as exit interview checklists for departing employees and executives, concerning company confidential and proprietary information such as trade secrets

Credentials

Education

Rutgers School of Law - Newark (J.D.)

  • Rutgers Computer and Technology Law Journal, 1989-1991

Rutgers School of Engineering (B.S., high honors)

    • Member of Tao Beta Pi – National Engineering Honor Society
  • Member of Eta Kappa Nu – National Electrical Engineering Honor Society

Professional Admissions

State of New York

United States District Court for the Southern District of New York

United States District Court for the Eastern District of New York

United States Patent and Trademark Office (Reg. No. 36,260)

Professional Activities

New Jersey Intellectual Property Law Association
Chair, Electronics, Telecommunication & Software Committee, 2012-2018
Chair, Intellectual Property Licensing Committee, 2014-2018
Past President, Board of Directors, 2014
President, Board of Directors, 2013
President-Elect, Board of Directors, 2012
Vice President, Board of Directors, 2011
Secretary, Board of Directors, 2010
Treasurer, Board of Directors, 2009

American Intellectual Property Law Association

New York Intellectual Property Law Association