Steven R. Greenfield
- IP Portfolio Management and Counseling
- Technology Transactions
- Trademarks, Trade Dress and Domain Names
Steven R. Greenfield is senior counsel, practicing in the technology/ intellectual property law group. Steven uses his engineering design and intellectual property experience, to work closely with inventors, engineers, scientists, start-up companies and corporate management to establish strategically valuable patent, trademark, and copyright portfolios that protect technologies, product lines, brands and marketing investments. He is well-accustomed to managing large and small portfolios and provides insight and strategies for protecting internal intellectual property. Steven often reviews client portfolios to leverage unexpected revenue streams through licensing or litigation. He emphasizes balancing intellectual property protection with creating barriers to competitor entry or expansion in a given market.
Steven has a deep and broad understanding of how to procure patents in various complex technologies and for various business and strategic reasons. He is sought after to explain complex patent drafting and procurement nuances, as well as technology protection strategies in easy to understand non-technical language. Steven counsels clients to understand the long-term power and strategic revenue growth potential created when research & development efforts are combined with a minimal intellectual property investment budget. Corporate net value is increased while competitors are blocked or left with a limited market entry point. Steven commits time with each of his clients to enhance their understanding of intellectual property concepts, strategic intellectual property planning and, most importantly, to provide them the ability to make confident, informed intellectual property related decisions.
Steven has peer-reviewed and recognized experience in patent, trademark, and copyright procurement, as well as in licensing intellectual property in both the U.S. and foreign countries. He advises each client with straight forward, proven patent and trademark portfolio strategies aimed to protect his client’s technology, product lines, branding and budget.
Prior to his legal experience, Steven was an electronic systems design engineer for Chrysler Technologies Airborne Systems, Inc. and E-Systems, Inc. where he designed high-speed analog, digital and microprocessor-based reconnaissance circuitry for U.S. Air Force and Navy Jets. Two of Steven’s designs flew in U.S. fighter aircraft during Desert Storm.
- Drafted a freedom to operate patent opinion for the FTC, which was used as the legal basis to break up the Pillar Point Partnership patent portfolio covering ultraviolet laser ophthalmolic surgical devices and methods resulting in ultimately lowered the consumer’s cost of Lasik surgery from over $4,000 per eye to less than $1,500 per eye in 1994;
- Worked closely with a start-up restaurant chain on a strategy and procurement of a trademark portfolio that was later used to stop a major national restaurant chain from using the protected trademarks and branding in a national advertising campaign for a new major product offering;
- Created a strategic 15+ patent portfolio for a medical device startup company that supported a technology sale of the company and portfolio for $30 million to a medical machine manufacturer in 2007;
- Prepared and negotiated manufacturing agreements, cross-licensing agreements, publishing agreements, technology sharing agreements, and others that both protect and generate revenue streams from underlying patents, trademarks, copyrights or trade secrets;
Presentations & Published Works
Business Method Patents, The New Weapon, presented at the Supply Chain Counsel Winter Meeting in Atlanta, GA,
Speaker, January 17, 2000
Professional Associations & Memberships
Dallas Bar Association
Intellectual Property and Corporate Section
Patent Resource Group
Drafting and Prosecuting Winning Patents, Instructor 2002-2005
Old Shepard Place Homeowners Association
Board of Directors