R&D LEGAL SOLUTIONS has more than 20 years of combined experience working for research, development and commercialization companies, both as in-house and outside counsel. Visit us at www.rdlegalsolutions.com. David Fonda, R&D LEGAL SOLUTIONS' founder and principal, worked for 10 years as the in-house patent counsel for Ceramatec, Inc., a research and development company that received a vast majority of its funding from Government Contracts. He has personally worked with patent counsel for the Department of Energy to modify license provisions that were more favorable for his clients. He has also conducted patent audits to make sure that companies are compliant with Government Contract provision so that the company, and not the Government had claim to the inventions created under those contracts. Mr. Fonda has experience addressing issues of non-compliance and helping remove ownership clouds over IP. Mr. Fonda had also drafted dozens of commercialization agreements, research and development agreements, IP licenses, inbound and outbound services agreements, material transfer agreements, prototype testing agreements, non-disclosure agreements, and subcontracts in support of commercial and government contracts. Some of Mr. Fonda’s other accomplishments include: ● Effectively led a successful in-house legal department ● Managed a large patent portfolio of both US and foreign applications ● Efficiently managed annual IP budget of more than $500,000 ● Drafted, negotiated and closed over $63,500,000 in commercial development deals ● Drafted, closed, and oversaw compliance of government contracts in support of government awards in excess of $129,500,000 ● Increased the number of issued patents by 172% ● Responsible for filing over 800 US and foreign patent applications to increase monetizable assets ● Reduced patent costs by more than $212,000 over the last three years ● Closed international development and commercialization deal with over $3,900,000 of development income over the past 14 months and an annual contractual obligation of at least $8,000,000 over the next 4 years ● Assisted in the submission process for obtaining an FDA 510K clearance ● Successfully renegotiated the US Manufacturing Clause and the US Competitive Clause with the Department of Energy Patent Counsel to allow for an international commercialization deal to take company technology to market ● Installed and customized a docket system to manage and track more than 1,000 patent and trademark matters and more than 1,700 agreements ● Created and chaired a patent review board to vet new invention ideas ● Created an internal invention submission policy to increase IP assets ● Drafted and reviewed hundreds of non-disclosure agreements to protect confidential information and allow discussions with potential commercial partners ● Refined lab notebook and visitor policies to protect valuable trade secrets ● Created a system for contract generation to save time and money while increasing accountability ● Drafted patents to protect inventions in a wide variety of fields ranging from medical devices to in situ remediation of tailings piles to telecommunications software ● Worked closely with inventors and regulatory agencies ● Prepared and reviewed patent, trademark, and copyright licenses, technology transfer agreements, assignments, nondisclosure agreements and other contracts and documents to acquire and secure intellectual property rights for clients ● Conducted due diligence searches and drafted opinions related to infringement, patentability, and other IP issues ● Litigated patent, trademark, copyright, franchise and contract issues to advance clients’ interests in judicial proceedings, including litigation management, taking discovery, and drafting and arguing pleadings ● Analyzed complex facts and issues to accurately identify, communicate and reduce potential risks to clients