Jeff D. Mulrooney

Of Counsel

Biography

Jeff Mulrooney has broad experience in managing IP matters including the preparation and prosecution of patent, trademark, and copyright applications. He also has experience in the evaluation of intellectual property license agreements, patentability opinions, patent infringement and validity studies, and trademark clearance opinions and is licensed by the United States Patent and Trademark Office (USPTO). With a bachelor’s in Biomedical Engineering and a background that includes experience with a wide range of technologies including medical devices, material sciences, mechanical, electrical, chemical, energy, defense, and consumer products, Jeff is equipped with a toolset that he uses to fight for his clients’ best interest and goals.

Representative Experience

Assisted regional healthcare system with the acquisition of a software company specializing in drug prescription management, including conducting the IP due diligence, preparing specific IP assignment documents (TMs and Patents), and vetting other aspects to ensure IP ownership transferred to the health system
Assisted regional healthcare system with acquiring a patient manager software company
Assisted regional healthcare system with investment in multiple startup technology companies
Represented a home healthcare company in the management of their trademark portfolio
Represented a home healthcare company in the management and policing of their trademark portfolio, including the representation in several trademark litigation matters to enforce their trademark rights
Prosecuted patent applications for surgical procedures, surgical tools, medical diagnostic tools and methods, patient data acquisition systems (ecg, eeg, pulse oximeter, etc.), patient positioning apparatuses, vaccination methods, defibrillators, recording electrodes, and many other patents in the medical field
Advised clients, from Fortune 100 to startup companies, on all stages of patent prosecution, trademark registration, and copyright registration
Drafted and negotiated service, design, research & development (R&D), manufacturing, sales, licensing, technology transfer, software as a service (SAAS), equipment leasing, employment, nondisclosure, non-compete, and joint venture agreements for clients in various technical fields
Counseled companies and individuals on obtaining domestic and international intellectual property protection in the electronic, software, chemical, materials, mechanical, energy, transportation, medical device, medical diagnostic, and consumer product fields
Managed foreign counsel to successfully secure and maintain international patent and trademark rights
Assisted clients in policing intellectual property rights via cease-and-desist communications and proceedings before the United States Patent and Trademark Office
Managed local counsel in litigation and provide litigation support
Provided due diligence and transactional support for the acquisition and sale of technology-based companies
Conducted patentability and freedom to operate studies

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Licensed In

Pennsylvania

Education

J.D. Case Western Reserve University School of Law

B.S. Virginia Commonwealth University

Related Services

Related News & Resources

Press Release

Jeffrey D. Mulrooney Joins Steptoe & Johnson’s Pittsburgh Offic...

Pittsburgh, PA – Jeffrey D. Mulrooney has joined the law firm of Steptoe & Johnson PLLC a...

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