Paul F. McQuade is a patent attorney with substantial government contracts experience. His practice spans both typical commercial intellectual property, with emphasis on licensing and IP-related transactions, and “government contracts IP” (rights in technical data and software) in the context of U.S. Government research and development and prime and subcontractor agreements. He offers strategic counseling on how best to maintain one’s IP position when doing business with the Government.
His work has included all manner of joint development and collaborative agreements between private parties and with government agencies: R&D procurements, OTA and OTP (prototype) Agreements, CRADAs, Work for Others, Sponsored Research, Cooperative Agreements, software licensing, Evaluation Agreements, and the like. He has defended clients against allegations of trade secret misappropriation and patent infringement both commercially and on government programs, and has brought and intervened in matters related to the Government’s alleged unauthorized use of patented inventions under 28 USC 1498.
He is a frequent lecturer on Intellectual Property in U.S. Government Contracting and for about a decade served as a Vice Chair of the ABA Public Contract Law Section’s Intellectual Property Committee.
Early in his career, Paul served as a clerk to judges on the U.S. Court of Appeals for the Federal Circuit, and the U.S. Court of Federal Claims. These courts have national jurisdiction, respectively, over patent and government contracts appeals and significant government contract and patent claims. After clerking, he served as a trial attorney at the U.S. Department of Justice (Commercial Litigation Branch, Claims Court and Federal Circuit Section) before entering private practice.
Concentrations
•Intellectual property
•Government contracts
•Technology law and related research and licensing transactions
Judicial Clerkships
•Hon. Jack R. Miller, U.S. Court of Appeals for the Federal Circuit
•Hon. Lawrence S. Margolis, U.S. Claims Court (now the U.S. Court of Federal Claims)
Recognition & Leadership
Awards & Accolades
•Recognized, 'IAM Licensing 250: The World's Leading Patent and Technology Licensing Practitioners,' Intellectual Asset Management (IAM) magazine, 2010
•Rated, AV Preeminent 5.0 out of 5.0
