Awards & Rankings 06.03.15
Jean-Paul Hoffman represents technology and emerging businesses in U.S. and international patent application preparation and prosecution, patent validity and infringement opinions, and a wide range of related IP matters.
A partner in Pillsbury’s Intellectual Property practice, Jean-Paul draws upon a unique combination of U.S. and international in-house and law firm experience when offering clients advice on the legal and practical aspects of IP development and management for a technology business. His areas of technical focus include complex electromechanical and mechanical systems, optics, semiconductor lithography and processing equipment, software, internet and e-commerce applications, cryptography, and network devices, protocols and wireless communications equipment.
Representative Experience
- Advises on IP licensing and transaction matters, including negotiating, managing and closing patent, software and other intellectual property license and transfer agreements; settlement, confidentiality and IT professional services agreements; and consultant agreements.
- Advises regularly on open-source software matters and on the IP aspects of mergers and acquisitions, including due diligence and the negotiation of IP terms and opinions.
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- In-house at one of the world’s largest semiconductor equipment manufacturers:
- Assumed IP development and management duties of one of the company’s IP attorneys, including preparing and prosecuting patent applications in Europe, the United States and numerous Asian countries.
- Performed freedom-to-operate analyses for company products, managing a number of European Patent Office oppositions and providing IP counseling for numerous product development groups.
- In-house at world’s largest enterprise resource planning software company:
- Negotiated, managed and closed multimillion-dollar software license, maintenance and professional services agreements.
- Handled other general corporate affairs and contract work for the company, including management of company’s trademark portfolio and preparation of trademark applications, assignments and licenses.
- In-house for a large computer hardware and software manufacturer:
- Prepared and prosecuted patent applications for a wide range of computer hardware and software technologies.
- Provided IP development and management advice on all aspects of the development, distribution and marketing of products by a number of the company’s product development groups.
- Assisted in assertion of company’s patent rights against competitors, advised on open-source software matters, and negotiated, drafted and advised on many software and other IP licenses and agreements.
Professional Highlights
The Legal 500 U.S., Patent Licensing and Transactional (2015)
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Associations
- American Bar Association
- American Intellectual Property Law Association
- Intellectual Property Owners Associations
- Virginia State Bar
- The Law Society of Upper Canada
Education
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LL.M., Intellectual Property, The George Washington University Law School, 1995
LL.B., York University, Osgoode Hall Law School, 1993
B.Sc.E., Mechanical Engineering, Queens University, 1990
Admissions
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Virginia
U.S. Patent and Trademark Office
Canadian Intellectual Property Office
Courts
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U.S. Court of Appeals for the Federal Circuit