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Steven R. Greenfield

Of Counsel

Spencer Fane attorney Steve Greenfield

T 972.324.0315
F 972.324.0301
sgreenfield@spencerfane.com


Steve Greenfield collaborates closely with inventors, engineers, scientists, startup companies, marketing personnel and corporate management to create, improve, and establish strategically valuable Intellectual Property (IP) portfolios of patents, trademarks, and copyrights. The IP portfolios protect client technologies, products lines, brands, and marketing investments. They are also forward looking and intended to support additional client business opportunities in the future. Steve enjoys explaining and performing all the steps and elements necessary to procure and maintain strong U.S. and foreign patent, trademark, and copyright portfolios.

Steve uses his in depth understanding of engineering design, along with more than 30 years of IP legal experience to leverage unexpected revenue streams for his clients through IP licensing or litigation. He often emphasizes balancing a product’s innovative IP protection with creating IP barriers to the general product market arena. This balancing of IP protection and IP barriers makes a competitor’s entrance or expansion in a client’s technology or service area difficult.

With a deep and broad understanding of how to procure patents in complex technologies (and in less complex, yet highly competitive commodity product lines), Steve is a sought-after resource who can explain technology coverage and protection strategies, as well as complex patent drafting and procurement nuances in easy-to-understand, nontechnical language. Steve routinely counsels clients through systematic patent, trademark and copyright related steps devised to help increase and protect their existing revenue streams or to create new revenue streams. Steve achieves such results by asking questions, listening carefully, and understanding his client’s already existing products, services, R&D, and marketing efforts. By orchestrating R&D and marketing information with intellectual property strategies, Steve helps his clients increase their corporate net value, protect their innovations, and leave their competitors with a blocked or limited market entry point for similar goods or services.

Steve commits time with each of his clients to understand their technology, innovations, and products. He also makes sure to enhance his client’s understanding of intellectual property concepts, and strategic intellectual property planning. Most importantly, Steve provides his clients with a spectrum of IP options and the ability to make confident, informed intellectual property-related decisions, while aligning legal strategies with overall business goals, objectives, and budgets.

Steve has a knack for helping internet application, internet of things (IOT) and software companies protect their application interfaces (APIs), graphic user interfaces (GUIs), and novel techniques of obtaining, processing, and using data. He has ample successful experience with preparing, prosecuting, and procuring software-based patents. Steve is particularly talented at understanding and procuring software-based inventions by carefully differentiating how data is obtained, processed, and used to provide an overall innovative result.

Prior to starting his legal career, Steve was an electronic systems design engineer. He designed and developed high-speed analog, digital, and microprocessor-based reconnaissance circuitry installed on U.S. Air Force and Navy jets. Two of his designs flew in U.S. fighter aircraft during Operation Desert Storm.

Highlights of Steve’s experience include:

  • Drafted a freedom to operate patent opinion for the FTC in 1994, which was used as the legal basis to break up a patent portfolio covering ultraviolet laser ophthalmic surgical devices and methods, resulting in lowering the consumer’s cost of LASIK surgery from over $4,000 per eye to less than $1,500 per eye.
  • Worked closely with a startup restaurant chain on strategy and procurement of a trademark portfolio. The startup restaurant client then used the trademark portfolio to stop a competitor and major national restaurant chain from using the protected trademarks and branding of the product in one of the major restaurant chain’s national advertising campaigns for a new major product offering.
  • Created a strategic 15-plus patent portfolio for a medical device startup company operating in the dialysis and renal replacement technology space. The created patent portfolio supported a technology sale of the company and patent portfolio for $35 million to an international medical machine manufacturer in 2007.
  • Advised a start-up client and negotiated agreements and licenses for live action show series. Negotiated with international entertainment and internet corporations to procure investment and payment for production of a 10-episode live action show. Also, negotiated contracts with a filming production company, merchandising companies, actors in the production, and foreign internet and cable entities to carry the live action show.
  • Prepared and negotiated manufacturing agreements, cross-licensing agreements, publishing agreements, technology sharing agreements, merchandizing agreements, and other contracts that both protect and generate revenue from underlying patents, trademarks, copyrights, or trade secrets.

Presentations and Publications

  • “Business Method Patents, The New Weapon,” Supply Chain Council Winter Meeting, January 17, 2000

Community Involvement

  • Old Shepard Place Homeowners Association, Board of Directors

Memberships

  • Dallas Bar Association, Intellectual Property and Corporate Sections
  • Patent Resource Group, Drafting and Prosecuting Winning Patents, instructor, 2002-2005

Contact Steven Greenfield at 972.324.0315 or sgreenfield@spencerfane.com.