Jeffrey M. Mann

Jeffrey Mann, a registered patent attorney and Partner in Stroock’s Intellectual Property and Technology Department, practices at the intersection of intellectual property, technology, data privacy and security.  Jeff excels in advising clients in all facets of intellectual property, privacy and complex tech transactions. Experienced with patent matters across the mechanical, electrical, computer science and technology sectors, he advises on, negotiates and structures license agreements, drafts opinions  and prosecutes patents. 

Jeff is exceptionally experienced in drafting and negotiating 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. 

He represents a wide variety of industry-leading businesses and inventors, devising comprehensive strategies for capturing, evaluating, patenting, leveraging and protecting their innovations worldwide. He helps clients protect their core business technologies, building, structuring and managing multinational patent portfolios to optimize their market position and protect them from infringement by competitors. 

Clients also frequently call on Jeff to advise on and conduct due diligence related to the intellectual property, information technology and privacy aspects of corporate, financial restructuring, real estate, structured finance, and insurance transactions. They further rely on him for guidance on issues related to websites, including domain name resolutions and the use of open-source software, as well as trademark, counterfeiting, and copyright-related matters. 

An International Association of Privacy Professionals designated Certified Information Privacy Professional (CIPP/US), Jeff also advises clients on data privacy, cybersecurity and technology matters, including data licensing, cloud services and outsourcing issues. He has a particular focus on financial products and systems, and the advertising sector.

• Corporate
• FinTech
• IP Transactions and Licensing
• Intellectual Property
• Israel
• Mergers, Acquisitions and Joint Ventures
• Patents and Patent Litigation
• Technology Transactions and Cybersecurity

In addition to many other varied matters, Jeff has:

• Prepared and negotiated license and software development agreements in connection with alternative trading systems.
• Represented a television network in connection with licensing of trademarks and other intellectual property related to studio operations.
• Assisted a large financial institution in transferring its operations to a cloud provider, including drafting and negotiating cloud provider and outsourcing agreements.
• Prepared privacy documentation and other agreements in connection with the launch of a variety of mobile apps.
• Prepared and negotiated trademark license agreements on behalf of a creditor committee as part of a multimillion-dollar bankruptcy proceeding.
• Prepared and negotiated Development and Supply Agreements in connection with intraocular lenses accompanying injector systems and ophthalmic surgical products for cataract surgery.
• Prepared privacy policies, terms of use and other website agreements for clients in a variety of industries, and advised regarding compliance with GDPR and other privacy regulations.
• Represented an IP-based video surveillance software provider in successfully resolving patent infringement litigation.
• Participated in the structuring and negotiating of transactions related to the transfer of electronic trading platforms and risk management software.
• 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, 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.
• Negotiated asset purchase and stock purchase agreements for several clients in the context of M&A, real estate, insurance, restructuring, and bankruptcy-related transactions.

• Super Lawyers, Intellectual Property, Top Rated

Certifications
Certified Information Privacy Professional (CIPP/US)

• Speaker, “Cybersecurity, Data Privacy and Workplace Risks in the New Normal,” Stroock and CohnReznick Webinar, May 13, 2020
• Speaker, "Why Family Offices Should Care About Cybersecurity and Data Protection," Stroock's Second Annual Family Office Symposium, November 13, 2019
• 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

• Co-author, “USPTO Extends Certain Deadlines Amid COVID-19 Pandemic,” Stroock Special Bulletin, April 7, 2020
• Co-author, “SEC’s Voya Order Underscores Importance of Cybersecurity Practices,” Bloomberg Law, October 23, 2018
• 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, “SAP Ruling’s Curious Approach To Subject Matter Eligibility,” Law360, July 26, 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

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

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

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