Sanjay Prasad

Partner, silicon valley

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Practice Experience

Sanjay Prasad draws from over twenty-five years of practice at the forefront of technology and intellectual property. He has extensive experience in advising entities on patent strategy including developing corporate patent strategy, advising on infringement matters, developing patent filing programs, patent acquisition and sales programs and patent and technology licensing, particularly in the high-tech sector including semiconductors, software, computer systems, internet, telecommunications and medical devices.

Sanjay’s experience includes:

  • As outside counsel, advising emerging and established companies on all aspects of patent matters including strategy, portfolio development, litigation, infringement matters, technology licensing.
  • As chief patent counsel to Oracle Corporation, leading the transformation of the patent strategy including its patent filings, licensing and litigation, and multiple policy, standard setting and software licensing matters.
  • As licensing and business executive - deal development, negotiation and close, patent sales and acquisitions, development of patent licensing programs, building and leading patent licensing/sales teams in the U.S. and abroad.
  • Patent strategy
    • Including assessment of strengths/weaknesses and development of strategy in view of organizational goals
  • Patent acquisitions
    • Including advising on the need for acquiring patents, developing an acquisition program and executing on the program
  • Patent and technology licensing
    • Including advising on the need and risks/advantages of inbound/outbound licensing
    • Development of strategy and execution
  • Patent portfolio development including patent application drafting and prosecution
  • Intellectual property policy
  • Standard setting organizations
    • Advising on compliance with IP policies
    • Evaluation and negotiation of agreements
  • Infringement matters
    • Evaluating potential infringements
    • Advising on strategy and negotiations with third parties

Education

  • B.S., Electrical Engineering, Boston University, 1986
  • M.S., Computer Engineering, Boston University, 1987
  • J.D., Syracuse University College of Law, 1992

Languages

English, Hindi

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