Jeffrey M. MannSpecial Counsel

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Offices


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Jeffrey Mann is a registered patent attorney in Stroock’s Intellectual Property and Technology Group. His practice focuses on all different facets of intellectual property and technology, including transactional work, licensing, opinion work, patent prosecution and intellectual property litigation. Jeff has also been designated as a Certified Information Privacy Professional (CIPP/US) by the International Association of Privacy Professionals.

Jeff has been involved in the drafting, negotiating and conducting of due diligence related to the Intellectual Property, Information Technology and privacy aspects of corporate, financial restructuring, real estate, structured finance and insurance transactions. Further, he has advised numerous clients on a range of issues related to websites, including domain name resolutions, the use of open-source software, as well as trademark, counterfeiting, privacy and copyright related issues.

Additionally, Jeff has litigated, prosecuted and rendered opinions on patent matters in the mechanical, electrical and computer science fields. He has also managed multinational patent portfolios, helping clients protect their core business technologies by developing effective patent portfolios structured with consideration to competitors’ activities and intellectual property protection.

Jeff has also drafted and negotiated cloud provider agreements, software license and maintenance agreements, outsourcing agreements, development agreements, trademark license agreements, intellectual property security agreements and distribution agreements for various companies.

For example, in addition to other matters, Jeff has:

  • Prepared and negotiated Development and Supply Agreements in connection with intraocular lenses accompanying injector systems and ophthalmic surgical products for cataract surgery.
  • Participated in the structuring and negotiating of transactions related to electronic trading platforms and risk management software.
  • Represented an IP-based video surveillance software provider in successfully resolving patent infringement litigation.
  • Prepared, filed and prosecuted patent applications related to various medical devices for a leading global medical device company and related to novel financial products for a financial industry client.
  • Prepared and negotiated various license agreements, including development agreements for clients in the electronic imaging, photofinishing, medical system, life sciences, graphic arts and advertising industries.
  • Prepared and negotiated trademark license agreements on behalf of a creditor committee as part of a multimillion-dollar bankruptcy proceeding.
  • Negotiated asset purchase and stock purchase agreements for several clients related to M&A, as well as real estate, insurance, restructuring and bankruptcy related transactions.

Honors & Awards

  • Super Lawyers, Intellectual Property, Top Rated

Selected Activities

Certifications
Certified Information Privacy Professional (CIPP/US)

Speeches & Events

  • Presenter, “Mitigating Vendor Risk,” Stroock Intellectual Property Group CLE, June 19, 2018
  • Presenter, “IP & Tech Transactions for the In-House Practitioner: Key Considerations,” Stroock Intellectual Property Group CLE, January 26, 2017
  • Faculty, “Data Security and Privacy Issues in Cloud Computing,” LawLine Continuing Legal Education Seminar, August 25, 2013

Publications

  • Contributor, “New York’s new regulatory cyber-security obligations: the details,” Compliance Matters, September 6, 2018
  • Co-author, “NYDFS Cybersecurity Deadlines Approaching for Financial Services Companies and Credit Reporting Agencies,” Stroock Special Bulletin, August 28, 2018
  • Co-author, “SIFMA’s Data Aggregation Principles and What They Mean for the Financial Sector,” Stroock Special Bulletin, April 18, 2018
  • Co-author, "Pen Testing: The Good, the Bad and the Agreement," New York Law Journal, March 2, 2018
  • Co-author, “December 31 Deadline for Electronically Registering DMCA Agents with the Copyright Office,” Stroock Special Bulletin, December 14, 2017
  • Co-author, "Patent Office Announces New Post-Prosecution Pilot Program For Responding to Final Rejections," Stroock Special Bulletin, July 20, 2016
  • Co-author, "Federal Circuit Finds Software Invention Eligible for Patenting," Stroock Special Bulletin, May 23, 2016
  • Co-author, "ICANN's Trademark Clearinghouse: A Potential New Tool for Trademark Owners," Stroock Special Bulletin, June 4, 2013
  • Co-author, "America Invents Act and the Patent Marking Statute," Stroock Intellectual Property Practice Group Special Bulletin, January 5, 2012
  • Co-author, "America Invents Act: Elimination of the Best Mode Defense," Stroock Intellectual Property Practice Group Special Bulletin, December 1, 2011
  • Co-author, "America Invents Act: Tax Strategies and Human Organisms Not Patent Eligible," Stroock Intellectual Property Practice Group Special Bulletin, November 16, 2011
  • Co-author, "Supplemental Examination – New Strategy for Patent Owners," Stroock Intellectual Property Practice Group Special Bulletin, November 7, 2011
  • Co-author, "America Invents Act: Changing the Standard for Inter Partes Reexamination" Stroock Intellectual Property Practice Group Special Bulletin, October 26, 2011
  • Co-author, "Prioritized ('Track I') Examination," Stroock Intellectual Property Practice Group Special Bulletin, October 11, 2011
  • Co-author, "ICANN's New TLD Programs: Trademark Owners Beware!" Stroock Special Bulletin, July 26, 2011
  • Co-author, "Patent Reform After All These Years ... Maybe?" IP Law360, June 28, 2011
  • Co-author; "Bilski v. Kappos: Business Methods Live to Fight Another Day" Stroock Intellectual Property Practice Group Special Bulletin, June 30, 2010
  • Co-author; "Tafas v. Doll: Where Is the USPTO Headed?" The Intellectual Property Strategist, May 2009
  • Co-author; "In re Bilski: Federal Circuit Addresses Standard for Patentability of Business Methods," Stroock Intellectual Property Practice Group Special Bulletin, November 5, 2008

Admitted To Practice

New York; New Jersey

U.S. District Court, Southern District of New York; U.S. District Court, Eastern District of New York; U.S. District Court, District of New Jersey


Patent Admissions

U.S. Patent and Trademark Office

Education

J.D., Fordham University School of Law, 2001

B.S., summa cum laude, Brooklyn College, 1998; Computer and Information Science


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Publications