Attorney Profiles

Attorney Profile

     

Jonathan W. Richards*

Equity Shareholder

1000 Eagle Gate Tower
60 East South Temple
Salt Lake City, UT 84111
Office: (801) 533-9800
Fax: (801) 328-1707
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Jonathan Richards joined the firm as a shareholder in 1993, having previously worked at a firm in Dallas, Texas. He is a senior member of the firm’s patent prosecution group, and he has extensive experience in patent, trademark and copyright matters.

Mr. Richards works closely with a number of major clients in the management and development of their IP portfolios, by helping them identify and protect key innovations and technologies through careful selection of U.S. and foreign IP protection strategies. He also frequently handles and manages the preparation of formal legal opinions on a variety of issues including patent validity, infringement, and non-infringement and design around strategies.

His practice also involves conducting due diligence investigations of the intellectual property portfolios of clients involved in funding transactions, and negotiating and documenting asset acquisition and licensing transactions.

Mr. Richards frequently works with clients in the presentation of in-house seminars designed to assist them with educational presentations to engineers and managers on intellectual property issues.

Mr. Richards served as the firm’s president and managing shareholder from 1996 – 2003, and is currently on its board of directors.

Primary Practice Focus

  • U.S. Prosecution of IP
    • Patent Prosecution
    • Trademark Prosecution
    • Copyright Registrations

  • International Prosecution of IP
    • Patent Prosecution
    • Trademark Prosecution

  • Licensing, Other Transactional Work & Client Counseling
    • U. S. and Foreign Licensing of Intellectual Property Rights, Including Patents, Trademarks, Copyrights, Trade Secrets, and Know How
    • Employment Agreements & Invention Ownership
    • Non-Competition Covenants
    • Non-Disclosure Agreements
    • Assignments of Intellectual Property Rights
    • Patentability Opinions
    • Trademark Searches and Clearance Opinions
    • Patent Infringement Opinions
    • Due Diligence Investigations of IP Portfolios During Acquisition or Merger Transactions
    • Defensive Opinions of Non-infringement and Design Around Strategies

Technical Experience

  • Electronics & Electrical Engineering
    • Electrical & Electromechanical Systems

  • Computer Systems, Software, E-Commerce, Business Methods & Information Technology
    • Hardware Systems
    • Software Systems and Architecture

  • Mechanics & Mechanical Engineering
    • Exercise & Training Equipment
    • Sports Equipment
    • Medical and Dental Devices

Second Language

German

Publications

Rick D. Nydegger & Jonathan W. Richards, Design Around Techniques, in Electronic And Software Patents: Law And Practice (Steven W. Lundberg & Stephen C. Durant eds., 2000) (2d ed. 2005).

Education

  • J.D., Order of the Coif, Southern Methodist University School of Law, 1984
  • B.S., cum laude, University of Utah, Electrical Engineering, 1981

Professional Admissions and Associations

  • Utah State Bar

  • Texas State Bar

  • Registered Patent Attorney

  • American Intellectual Property Law Association (AIPLA)

Other Information of Interest

Post law school

  • Adjunct Faculty Of Brigham Young University's J. Reuben Clark Law School
  • Chair of the Trademark Treaties and International Law Committee of the American Intellectual Property Law Association
  • Represented the AIPLA at meetings of the Standing Committee on the Law of Trademarks at the World Intellectual Property Organization in Geneva, Switzerland, 2003-2005

*Admitted also in Texas