Gary A Walpert, Of Counsel

(Patent Attorney; Litigation and Transactional) Gary Walpert is an intellectual property and technology centered transactional attorney with more than 40 years experience, primarily in private practice. Gary started at prominent New York and Boston intellectual property law firms as an associate, and went on to spend more than 20 years as a partner in prominent general practice and IP focused firms where he acquired a substantial understanding of the business of law. On the transactional side of his practice, he was involved in monetization of patent portfolios and transactions relating to patents and technology. In particular, Gary has negotiated on behalf of both buyers and sellers of technology rights in software, hardware, manufacturing, licensing, and performed IP due diligence relating to M&A and funding transactions. The clients ranged from startups to large corporations and universities, across a huge range of technology and legal problems.

Gary understands the business aspects of IP and is focused on the idea of achieving client goals. He brings to the table an in depth knowledge of diverse technologies including photolithography, superconducting materials, financial products, organic and inorganic chemistry, telecommunications, computer structures and operations, speech and other forms of pattern recognition. He also understands the basic underpinnings of technology which enables him to learn quickly new and developing innovations. He can create well focused agreements, and provides not only better protection for the business, but better licensing and other transactional opportunities.

Gary also handled, directly or through supervision of younger attorneys working for him, over 1000 patent applications, domestically and internationally. These granted patents cover many diverse technologies. Gary has also worked on behalf of clients in bet-the-company litigation.

Practice Areas

  • Transactions relating to technology opportunities
  • Due diligence relating to M&A and other corporate transactions
  • Patent portfolio monetization
  • Domestic and international patent prosecution and analysis
  • Strategic business advice involving technology, and IP in particular
  • Opinions relating to infringement, patent validity, and freedom to use
  • Confidentiality agreements including both nondisclosure and nonsolicitation clauses
  • Noncompetition agreements
  • Development agreements including joint venture and joint development
  • License agreements including one-way licenses, cross-licenses, and licensing in connection with joint ventures>
  • Patent litigation analysis and strategy
  • Export control issues
  • Agreements relating to multinational issues