Renato Smith-Bornfreedom
Partner @Barclay Damon Llp
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WORK HISTORY
Partner @Barclay Damon Llp
New York, NY, US
I co-chair our Data Security & Technology practice area and serve as Advisor to the Summer Associate Program. I am former co-chair of our Trademarks, Copyrights and Licensing practice area. My practice is concentrated in business and IT transactions, data privacy, cybersecurity, IP counseling, licensing, patents, copyrights, litigation support and commercial transactions, including the following: Handling of contractual matters and deal work, including SaaS, platform and cloud subscription agreements, SLAs, EULAs for software and mobile apps, Master Service Agreements, Terms of Use, Privacy Policies, Accessibility Policies, NDAs, asset purchase agreements, product development agreements, co-marketing and teaming agreements, manufacturing and distribution agreements, sponsored research agreements, patent license agreements, copyright release agreements, ghostwriting agreements, product champion agreements, IP employment provisions, and independent contractor agreements. Lead role in post-suit settlement conferences and the drafting and negotiation of settlement agreements. Support of litigation team, including the preparation of rule 11 claim charts, claim construction analysis and development of strategies to address invalidity and non-infringement contentions. Management of worldwide patent portfolios. Drafting and prosecution of patent applications in software, electronic and mechanical fields.Counseling and oversight for the preparation and filing of copyright applications for software and other works. Counseling regarding brand development, including performance of trademark searches.
EDUCATION
The Wharton School
Certificate, Introduction to Financial Accounting
Synopsys, Inc.
Certificate, Black Duck Software Audit Process, October 2020
University of Illinois College of Law
Doctor of Law (J.D.), Law
University of Illinois Urbana-Champaign
B.S., Mechanical Engineering
SKILLS
ABOUT RENATO SMITH-BORNFREEDOM
I am a seasoned transactional attorney with a practice concentrated in the areas of the areas of data privacy, cybersecurity, intellectual property, and commercial transactions. I apply my engineering background and grasp of technology to help bring clarity and practical solutions to complex interplays between technology and law. Leveraging my experience as a registered patent attorney and a Certified Information Privacy Professional (CIPP/US), I assist companies and entrepreneurs with contracts; licensing; privacy and cybersecurity policies and programs; complex business transactions; dispute resolution; intellectual property strategies; and patent, trademark, and copyright applications. He has counseled clients in a wide array of industries, including health care, financial services, education, software-as-a-service (SaaS), gaming, telecommunications, and electric power utility.
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