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Martha Lessman Katz provides comprehensive counseling to commercial and not for profit entities in their development, implementation and management of their intellectual asset strategies. She takes a business-focused approach when assisting clients in a wide spectrum of industries in their exploitation and commercialization of their proprietary information technology and other intellectual property assets, as well as their acquisition and use of third party technology products. She has been involved in all aspects and on both sides of technology transactions, including intellectual asset protection and management, technology licensing, patents and trademarks, technology transfer and other forms of technology contracts, such as OEM, VAR, reseller and distribution relationships. Building on a strong general business foundation, she brings over 25 years of legal, substantial industry experience and practical know-how to every deal, combining technical, business and legal knowledge to help clients meet their global information technology and telecommunications needs. She assists clients in developing out-licensing models and strategies and negotiates sophisticated high technology transactions involving e-commerce, system licensing, development and integration, technical support, outsourcing and source code escrow services and ownership and protection of intellectual property for both technology vendors and purchasers. As such, she is experienced in creating suites of forms for clients in the information technology, pharmaceutical and insurance industries, companies out-licensing their proprietary technology, including electronic ‘click-wrap’ licenses and licensing within and among company families, negotiating licensing terms and provisions addressing ownership and "work-for-hire" issues, testing and acceptance. And because technology transactions often include services, she assists clients in the negotiation of consulting services agreements, such as those related to system implementation and integration, custom programming, hosting, network management and application service provider models. Ms. Katz's practice includes advising on issues confronting clients conducting business over the Internet from domain name registration, protection and sale, initial web site development and ongoing review to customer relationship management, employee resource planning, web site terms of use and privacy policies, hosting, linking, content, joint marketing and subscription agreements, co-branding, bid and acquisition of goods and services via reverse auctions and other online contracting, advertising, privacy and related issues confronting customers in their conduct of sweepstakes, contests, e-mail, gift card, redemption and other marketing campaigns. She is knowledgeable and assists clients in their brand identification and protection through trademark and copyright registration. Some examples of the types of services Ms. Katz provides and the various industries are: Advising and negotiating licensing and services terms for a university medical system in its efforts to convert from paper to electronic patient medical records Negotiating on behalf of a software and services supplier who assists its customers in their internal management of their IP portfolios as well as assist law firms and corporations in individual investors in their patent renewals Assisting a financial institution in the outsourcing of its account and item processing, on-line banking and bill payment services Regularly advising a Fortune 500 manufacturer of a wide variety of consumer and commercial tools, faucets, locks and related hardware in all its technology and internet related transactions Providing negotiating advice and strategy to a university-owned children’s hospital in its acquisition of vital health care information system software Assisting a psychiatric hospital in its provision of healthcare information on its website Providing a variety of technology related services to an elder care institute affiliated with and staffed by a major Baltimore-based university and hospital with respect to its development, publication and commercialization of a series of CD modules instructing home and institution-based health care providers in their care of persons suffering from Alzheimer’s disease Regularly advising a NASDAQ discount brokerage firm with client assets of over $80 billion in a wide variety of its licensing, co-branding and affinity transactions involving many of the top information technology and telecommunications suppliers and service providers Advising a manufacturer of electronic sensors in its licensing and OEM relationships Providing licensing, consulting, clinical research, materials transfer, clinical trial, subscription, maintenance and support services templates for clients licensing their technology in such disparate industries as: Biopharmaceutical research and development company focusing on cancer treatments Pipe, sewer and open channel water and waste water flow measurement A vendor of proprietary pneumatic tube transport system to hospitals and other health care institutions Publications, municipalities and other entities needing assistance in route optimization and tracking vehicle A washer nozzle manufacturer that developed for internal use and now commercializes an internal facilities management application Assisted in drafting a form agreement to be used in the retention of faculty for an on-line university Practice Areas: Intellectual Property & Technology Copyrights Counseling E-Business & Technology Licensing Life Sciences, Biotechnology & Pharmaceutical Bar Admissions/Court Admissions:California District of Columbia Illinois Maryland United States Court of Appeals for the Seventh Circuit United States District Court for the Northern District of California United States District Court for the Northern District of Illinois United States District Court for the Southern District of California United States Supreme Court Education:Loyola University School of Law, J.D. 1977. Washington University in St. Louis, A.B. 1974, Phi Beta Kappa. Affiliations, Associations and Special Achievements: American Bar Association Baltimore City Bar Association: Technology Committee California State Bar Association District of Columbia Bar Association Emerging Technology Center, Baltimore: Mentor Howard County Economic Development Association: Advisory Board, NeoTech Incubator Illinois State Bar Association Licensing Executives Society Maryland Bar Association: Special Technology Committee Publications: Avoiding the Perils and Pitfalls of E-Commerce, Maryland State Bar Association, The Maryland Bar Journal (December 2000). Speaking Engagements: So You Want to Be on the Internet..., Community Colleges of Baltimore County, Baltimore, Maryland (June 2003).
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