Mr. Naifeh is an attorney with expertise in all aspects of intellectual property. His practice focuses on overflow assistance to corporate IP departments, patent portfolio development and international patent strategies. He is registered to practice before the United States Patent Office and is licensed as a Professional Engineer (“P.E.”).
Principal – Law Offices of Bill R. Naifeh (2008 – Present)
Manages patent portfolios, drafts patents and opinions for a select group of companies. Functions as a part-time in-house lawyer often working at the client’s facility. Provides general consulting and legal services relating to intellectual property.
Vice President of Intellectual Property – Innovative Spinal Technologies, Mansfield, Massachusetts (2007)
Draft and negotiated numerous licensing, product development and technology acquisition agreements. Managed a five person intellectual property department and the corresponding activities of numerous outside law firms. Supervised the rapid expansion of the patent and trademark portfolios. Supervised numerous freedom-to-operate and due diligence investigations. Provided general legal support for all departments and provided legal training to various departments in contract and intellectual property law. Reviewed FDA regulatory submittals for consistency with intellectual property positions. As a member of the Executive Management Team, participated in the strategic management of the company.
Principal – Law Offices of Bill R. Naifeh (2003 – 2006)
Prepared and developed strategies for patent applications throughout the world, including the U.S., Europe, China, Brazil, Canada, and Russia. Provided consulting services for small, medium and large multi-national corporations in areas of patent development and prosecution. Advised clients in the development of patent strategies and portfolios. Preparation and prosecution of numerous U.S., foreign, and PCT patent applications covering technologies such as computer software, telecommunications, medical devices, and business methods. Provided IP consulting services and functioned as an in-house counsel for several clients, including Innovative Spinal Technologies.
Senior Associate – Haynes and Boone L.L.P., Dallas, Texas (2000-2003)
Negotiated technology licensing agreements involving a wide variety of intellectual property and technology issues, such as joint development agreements, patent and trademark licensing, consulting agreements, and software development agreements. Developed and implemented patent development programs for a variety of small and midsize companies. Developed international strategic patent management plans for large multi-national national companies. Preparation and prosecution of numerous U.S., foreign, and PCT patent applications covering technologies such as computer software, telecommunications, medical devices, oil exploration equipment, and business methods. Filed trademark applications and advised clients on trademark issues. Negotiated settlement agreements involving trademark and domain name disputes.
Associate Attorney – Winstead P.C., Dallas, Texas (1995-2000)
Negotiated technology licensing agreements and contracts involving software, technical construction projects including turnkey facilities for the reduction of iron oxide and Na2SO4 crystallization plants. Negotiated technical and legal points because of a working knowledge of software, engineering, and manufacturing processes. Drafted a wide variety of patent applications covering computer peripherals, software, mechanical inventions and business methods. Responded to office actions from the PTO on both patent and trademark applications. Counseled clients on intellectual property matters.
Associate Attorney – McKinney Stringer, Oklahoma City, Oklahoma (1992-1995)
Represented clients in environmental site investigations and closure activities, including determination of compliance status, contract negotiations and permitting. Managed several environmental facility audits. Researched complex environmental and construction law issues.
EDUCATION and LICENSES:
- J.D., The University of Texas
- B.S. in Engineering, University of Oklahoma
- Registered to Practice before the U.S. Patent and Trademark Office
- Registered Professional Engineer (“P.E.”)