2009 - Sixteenth Annual Advanced Licensing Institute (ALI) Government Licensing - Jacob "Jesse" Erlich

"Government Licensing" - Presentation (PPT)

Jacob "Jesse" Erlich Biography: (click here for PDF version)

Jesse Erlich is a Partner and member of the Intellectual Property / SciTech, Government Contracts and Science & Technology Groups. Prior to joining Burns & Levinson LLP in January 2006, Mr. Erlich was a Partner with the firm Perkins Smith & Cohen LLP. Mr. Erlich had previously served as Chief Patent Advisor for the United States Air Force.

Mr. Erlich represents a wide array of clients such as universities and small and large technology companies in diverse technological fields. He provides advice on patents and other forms of intellectual property, licensing and government related matters and is also involved with the preparation and prosecution of patent applications (U.S. and foreign). In a representative case, Mr. Erlich obtained intellectual property protection for a client and thereafter was instrumental in negotiating and preparing agreements transferring a substantial portion of the intellectual property to a major company.

He has contributed to numerous publications in the fields of intellectual property and technology transfer, and Mr. Erlich has co-authored a book entitled, Technology Development and Transfer - The Transaction and Legal Environment, Quorum Books, 1997. He is a contributing author to 2000-2008 Licensing Update, Aspen Law & Business - a division of Aspen Publications, Inc. and Valuation of Intangible Assets in Global Operations, Quorum Books, 2001. Mr. Erlich is currently on the faculty of the Advanced Licensing Institute at Franklin Pierce Law School. He has also sat on the faculty of The National Intellectual Property Law Institute, Postgraduate Program in Intellectual Property and The Intellectual Property Institute for Corporate Counsel, both in Washington, D.C. A frequent lecturer and speaker, Mr. Erlich has been asked to appear before groups ranging from the WPI Venture Forum to Government Patent Law Association Conferences and the Franklin Pierce Law School Annual Licensing Program to the American Association of State Colleges and Universities.

Additionally, Mr. Erlich has authored and co-authored numerous articles such as, "Setting the record straight on legal-protection terms" co-authored with Anne Pareti, Boston Business Journal, March 7, 2008 "Understanding Intellectual Propertiy" published in MENSA Research Journal (2006), The Federal Technology Transfer Process Licenses and Cooperative Research And Development Agreements, Understanding Intellectual Property, Using Government Resources For Funding And Technical Assistance and Turning to the Government to Get IP Off the Ground. Mr. Erlich has co-authored with Alan Gutterman, Esq. A Practical View Of Strategies For Improving Federal Technology Transfer and co-authored with Jerry Cohen, Esq. Protect Your Brain Share: Get to Know the Intellectual Property Rules. Mr. Erlich was a contributing author to a book entitled "Valuation of Intangible Assets in Global Operations," published by Quantum Books, 2001.

Mr. Erlich is admitted to practice law in Massachusetts, the District of Columbia and is admitted to practice before the Supreme Court of the United States. He is a registered patent attorney with the United States Patent & Trademark Office and the Canadian Patent Office. In addition, Mr. Erlich earned the Certified Licensing Professional (CLP) credential in 2008. Mr. Erlich has been appointed to the United States - Israel Science and Technology Commission Task Force: Legal, Patent and Intellectual Property Rights and serves on the Board of Directors of the National Defense Industrial Association (NDIA), New England Chapter as well as on the Advisory Council of the National Institute of Justice, a research agency of the United States Justice Department. He is a member and past President of the Boston Patent Law Association, the Licensing Executive Society and the American Intellectual Property Law Association. Mr. Erlich is listed in Who's Who in American Law and Who's Who in Intellectual Property and has recently been selected winner of the 2008 Federal Laboratory Consortium Northeast Regional Appreciation Award. Mr. Erlich was selected as a Massachusetts Super Lawyer in 2008, 2007, 2005 and 2004. The selection of attorneys is based on a poll and internal research done by Law & Politics Magazine and reviewed by an independent blue ribbon panel of their peers. Listed attorneys and finalists consist of the top 5% of attorneys in Massachusetts. The listing appeared in the November issue of Boston Magazine and in New England Super Lawyers Magazine.

A graduate of Worcester Polytechnic Institute, Mr. Erlich earned his J.D. from Georgetown University Law Center.

Articles and Publications

  • Outsourcing Your Intellectual Property Work May Be Illegal" co-authored with Stephen F.W. Ball, Jr., IPFrontline.com, December 19, 2008
  • Setting the record straight on legal-protection terms" co-authored with Anne Pareti, Boston Business Journal, March 7, 2008
  • Turning to the government to get IP off the ground" Boston Business Journal
  • Protect your brain share: get to know the intellectual property rules" co-authored with Jerry Cohen, Mass High Tech

Speaking Engagements

  • Speaker, "SBIRs & Government Funds" at the UMASS Dartmouth Advanced Technology & Manufacturing Center's Entrepreneurship Speaker Series on November 12, 2008. Mr. Erlich spoke on Government funding sources for small businesses.
  • Presenter, "Mechanisms for Transferring Federally Owned Technology" at the Licensing Executive Society Annual Meeting October 21, 2008.
  • Presenter, "How to Win SBIR awards" in Boston, MA on August 20, 2008
  • Presenter, New Hampshire High Technology Counsel's IP Forum, July 16, 2008.
  • Presenter, "Intellectual Property and Government Rights to Inventions" Federal Laboratory Consortium for Technology Transfer, May 2008.
  • Presenter, "Intellectual Property and Technology Commercialization" hosted by the Institute for Economic Development - Small Business Development Center on April 15, 2008.
  • Presenter, "Rights to Government -Funded Inventions and Other Considerations Made Under Rules Governing the SBIR-STTR Programs" at the 2008 SBIR ASSETs Forum on March 19, 2008.
  • Presenter, "Government Contracts and Export Control Issues" Boston Patent Law Association, March 6, 2008
  • Presenter, "Government Licensing" at the 17th Annual Advanced Licensing Institute in January 2008.
  • Presenter, "Rights to Government Funded Inventions Made Under the SBIR/STTR Programs" at the 2007 SBIR Phase II Conference & Exhibition, Arlington, Virginia on August 22, 2007.
  • Presenter, the Annual Federal Laboratory Consortium meeting in Dallas, Texas on May 14-16, 2007.
  • Presenter, "Rights in Government Funded Inventions" at the Annual Spring SBIR meeting in Research Triangle, North Carolina on May 1-3, 2007.
  • Speaker, "When is an Invention an Invention?" at Worcester Polytechnic Institute's Collaborative for Entrepreneurship and Innovation on March 27, 2007.
  • Panelist and Speaker, "Alternative Sources of Funding" at the Boston Entrepreneur's Network on February 6, 2007.
  • Speaker, Jesse Erlich, Stephen Chow, Jerry Cohen, "Intellectual Property Assets", 2006 Annual Meeting of the Rhode Island Bar Association, June 23, 2006.
  • Jesse Erlich spoke about "Patent Rights under Government Contracts" at the Annual National Defense Industrial Association (NDIA) conference in Newport, RI on May 10, 2006.
  • On May 1, 2006 Jesse Erlich spoke at the Annual Federal Laboratory Consortium (FLC) Meeting in Minneapolis, MN. He spoke on the topic, "Intellectual Property Issues."
  • Speaker, Government Funding Resources at the Amoskeag Business Incubator luncheon on March 29, 2006.
  • Speaker, Intellectual Property rights with respect to the SBIR/STTR Program for the SBIR Venture Capital Fare & Event, March 16, 2006.

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