Practice Expertise

  • Corporate
  • Banking and Finance
  • Corporate Governance and Board Advisory
  • Copyright Counseling and Litigation

Areas of Practice

  • Banking and Finance
  • Copyright Counseling and Litigation
  • Corporate
  • Corporate Governance and Board Advisory
  • Corporate Transparency Act
  • Emerging Growth and Venture Capital
  • Energy Technology
  • Energy Transition
  • Intellectual Property
  • Intellectual Property and Technology ...
  • Licensing, Technology Transfer and ...
  • Mergers and Acquisitions
  • Private Equity
  • Trade Secrets Counseling and Litigation
  • Trademark – Non-Contentious
  • Trademark Counseling and Litigation
  • Trademark Proceedings
  • White Collar Defense and Internal ...
  • White Collar, Regulatory Defense and ...
  • View More

Profile

Jeff Dodd has more than 40 years’ experience helping companies with their corporate, securities, intellectual property and technology transactions.

Jeff’s clients range in size from Fortune 50 companies to emerging businesses.

Jeff has extensive corporate, securities and corporate finance experience, including public and private securities offerings, merger and acquisition transactions, joint ventures, corporate partnering and similar arrangements, private debt and equity financing transactions (including private equity and venture capital), and regulatory, governance and compliance matters.

Jeff advises clients concerning their IP strategy and monetization programs, licensing and joint venture transactions and data security, privacy and protection issues. Jeff is the co-author of Modern Licensing Law with University of Houston Law Center Professor and former Dean, the late Ray Nimmer. The treatise covers all aspects of intellectual property licensing and has become one of the industry’s most respected publications on the topic. He also became co-author of Drafting Effective Contracts also with Professor Nimmer. Jeff is routinely asked to write, speak and present on various topics.

Jeff continues to serve his alma mater as a University of Houston Honors College Advisory Board Member. He is also a past President and former board member of the University of Houston Law Foundation. He is a lifetime fellow in both the Texas Bar Foundation and Houston Bar Foundation.

Experience

Corporate, Securities and Corporate Finance: experience in diverse domestic and international corporate transactions, including:

  • representing various participants in public and private merger and acquisition transactions
  • representing issuers and underwriters (and investment bankers) in connection with public and private securities offerings
  • representing private equity, venture capital and other investment groups or funds, as well as portfolio companies in structuring, documenting and negotiating investment arrangements
  • structuring, negotiating and documenting the formation of private equity, venture capital and hedge funds
  • advising regulated entities (including broker/dealers and investment advisers) as to regulatory and compliance matters
  • structuring, negotiating and documenting joint venture, corporate partnering and similar arrangements

Intellectual Property, Technology, Data Security, Electronic Commerce and Commercialization: extensive experience in a variety of domestic and international intellectual property, information, and business process-related transactions, including

  • representing various parties in structuring, negotiating, enforcing, and unwinding licensing transactions, domestic and international, in numerous industries, including energy, computer technology, biotechnology
  • negotiating, enforcing and unwinding ERP and outsourcing arrangements
  • advising domestic and international clients on data protection, security breach, security and privacy laws and devising compliance strategies
  • structuring, negotiating, documenting and unwinding strategic ventures and alliances where intellectual property is the core asset
  • planning, design and implementation of electronic commerce and trading strategies and arrangements, domestic and international
  • counseling, structuring, negotiating, and documenting intellectual property and information, acquisition, commercialization transactions

Education
BA, University of Houston, magna cum laude, 1976

Areas of Practice

  • Banking and Finance
  • Copyright Counseling and Litigation
  • Corporate
  • Corporate Governance and Board Advisory
  • Corporate Transparency Act
  • Emerging Growth and Venture Capital
  • Energy Technology
  • Energy Transition
  • Intellectual Property
  • Intellectual Property and Technology Transactions
  • Licensing, Technology Transfer and Monetization
  • Mergers and Acquisitions
  • Private Equity
  • Trade Secrets Counseling and Litigation
  • Trademark – Non-Contentious
  • Trademark Counseling and Litigation
  • Trademark Proceedings
  • White Collar Defense and Internal Investigations
  • White Collar, Regulatory Defense and Investigations

Professional Career



Articles

  • “Modern Licensing Law” A treatise covering all aspects of information and intellectual property licensing, Thomson West
  • The Economic Observer, Texas Report
  • Three Large States Revise Their Security Breach Notification Laws and Texas Applies Its Law to Residents of Some Other States to Boot, IP and Technology Developments
  • Recent Cases Should Make Software Licensors Review Their Distribution Methods and License Terms (and They May Even Make Us Look at Open Source Licenses in a Different Way), IP and Technology Developments
  • Audit Response Letters: Skirmishes at the Boundaries Set by the Treaty, 32 Corporate Counsel Review 1
  • Corporate Transparency Act beneficial ownership reporting is here, Texas Bar Blog
  • Therasense Inc. v. Becton, Dickinson and Company—The Federal Circuit tightens the standards necessary to establish the inequitable conduct defense by requiring a “but-for” showing of materiality
  • The World Law Group Launches Global Guide to Data Breach Notifications and Companion Website
  • “The Need for a Global Framework for Knowledge Transactions: Cross-Border Licensing and Enforcement,” Trade in Knowledge: Intellectual Property, Trade and Development in a Transformed Global Economy World Trade Organization, World Trade Organization
  • Managing Legal and Contractual Risk in the Middle East – an Integrated and Preventative Approach, Andrews Kurth Middle East Newsletter
  • Intelligent Energy Law – Focus on Advanced Drilling Technology, Andrews Kurth Middle East Newsletter
  • Modern Licensing Law, 2023 ed., Thomson Reuters
  • Tribute to Ray Nimmer, 56 HOUS. L. REV. 253
  • Middle East Technology Market Needs Intelligent Energy Law, Pipeline Oil & Gas Magazine
  • Treasury Department Issues Final Rule on Beneficial Ownership Reporting Requirements Under the Corporate Transparency Act, The Journal of Federal Agency Action, Volume 1, No. 2
  • SEC Issues Guidance on JOBS Act Research Provisions
  • NYSE, NYSE MKT and NASDAQ Propose Amendments to Compensation Committee Listing Standards
  • AK Migration: Article 2B Offers Jurisprudence for All Forms
  • AK Migration: ISS Publishes 2012 Updates to Benchmark U.S. Proxy Voting Guidelines
  • AK Migration: Oil and Gas Companies Should Expect Increased SEC Scrutiny of Operations and Reserves
  • AK Migration: E-Commerce: A Sticky Legal Arena
  • The Presumption of Validity Triumphs over a Good-Faith Belief of Invalidity
  • Intelligent Energy Law Series Continues, Andrews Kurth Middle East Newsletter
  • Proposed Legislation Would Prohibit Fee-Shifting Bylaws for Delaware Stock Corporations
  • Andrews Kurth Launches Specialist “Intelligent Energy Law” Initiative at Subsea Expo 2014, Andrews Kurth Middle East Newsletter
  • Delaware Passes Legislation Prohibiting Fee-Shifting Bylaws and Validating Exclusive Forum Selection Bylaws for Stock Corporations
  • Samsung v. Apple – The Supreme Court Limits Damages in Design Patent Cases
  • Supreme Court Agrees to Hear Important Patent Venue Appeal
  • Delaware Supreme Court Finds Fee-Shifting Bylaw Permissible
  • NASDAQ Amends Compensation Committee Independence Requirements
  • Post Exclusivity Issues For Biologics
  • People’s Republic of China Cybersecurity Law: A Preliminary Overview for Western Companies
  • Supreme Court to Continue Undoing Rigid Tests in Patent Cases?
  • Post-Expiration Royalties Remain Stuck in Web of 50-Year Precedent
  • ISS Publishes Guidance on New Methodology for Evaluating Pay-for-Performance Alignment and Updates to its Governance Risk Indicators
  • Congress Passes the JOBS Act to Ease IPO Process for “Emerging Growth Companies” and Enhance Capital Formation
  • AK Migration: Innovation to the Fore as ONS Audience Looks at Middle East Opportunities
  • SEC Proposes Amendments to Allow General Solicitation in Certain Private Offerings Pursuant to JOBS Act
  • Patent-Eligible Subject Matter in Business Method Patents
  • SEC Adopts Rules to Allow Crowdfunding Beginning May 16, 2016
  • Limelight Networks, Inc. v. Akamai Technologies, Inc., et al.
  • Cybersecurity Due Diligence Is Crucial in All M&A—Including Energy M&A Transactions
  • SEC Issues Guidance on General Solicitation and Rule 506 Bad Actor Rules
  • SEC Issues Guidance on Broker-Dealer Registration Exemption in Title II of the JOBS Act
  • SEC Issues Guidance on Crowdfunding Rules
  • Third Circuit Decides the FTC Will Be the Primary Authority on Data Breach and Privacy
  • New York Proposes First State Cybersecurity Regulations for Financial Services Companies; Federal Agencies Push for Enhanced Standards to Prevent “Cyber Contagion”
  • Supreme Court Gives Deference to USPTO in Post Grant Proceedings
  • PCAOB Adopts New Auditing Standard Regarding Related Party Transactions and Amends Other Auditing Standards
  • AK Migration: Intelligent Energy Law Insights at ADIPEC and WFES
  • AK Migration: Hitting Non-Practicing Entities Where It Hurts
  • AK Migration: A Sharply Divided En Banc Federal Circuit Decision Limits Intervening Rights To Claims Textually Modified in Reexamination
  • AK Migration: DC Circuit Panel Vacates Proxy Access Rule
  • AK Migration: SEC Proposes Rules for Compensation Committees and Compensation Advisers
  • AK Migration: Middle East Opportunities and Challenges in Focus at ADIPEC
  • SEC Adopts Rules Implementing Dodd-Frank Requirements for Compensation Committees and Compensation Advisers
  • General Solicitation Permitted in Certain Rule 506 and Rule 144A Offerings; “Bad Actors” Disqualified from Rule 506 Offerings; Other Significant Amendments Proposed to Regulation D
  • New Proposed Rules Regarding Government Rights in Federally Funded Research
  • FAST Act Amends JOBS Act and Creates New Private Resale Exemption
  • Copyright Office Promulgates New Regulations for Designation of Registered Agent Under the Digital Millennium Copyright Act
  • Supreme Court Bolsters Patent Exhaustion: A Patentee’s Sale of an Item Automatically Exhausts All Patent Rights in the Item
  • Federal Circuit Expands the Definition of Direct Infringement
  • JOBS Act Update: SEC Issues New Guidance and Approves Amendments to FINRA Research Rules
  • SEC’s Division of Corporation Finance Issues JOBS Act Guidance
  • AK Migration: EIC and Andrews Kurth to Host Legal and Contractual Risk Management Seminar for UK Companies in Abu Dhabi
  • AK Migration: Contracting in Cyberspace
  • AK Migration: Licensing Law Update
  • AK Migration: Time and Assent in the Formation of Information Contracts: An Essay on the Mischief of Applying Article 2 Inspired Contract Law to Information Contracts
  • Delaware Chancery Court Provides Further Support for Forum Selection Bylaws
  • VirtualAgility Inc. v. Salesforce.com: Federal Circuit Reverses District Court and Requires a Stay Pending a Patent Office Review of a Covered Business Method Patent
  • Supreme Court Alters Appellate Standard of Review for Claim Construction in Patent Cases
  • Through the Rabbit-Hole: Alice Corporation Pty. Ltd. v. CLS Bank International: Supreme Court Holds “Merely Requiring Generic Computer Implementation” Cannot Transform an “Abstract Idea into a Patent-Eligible Invention”
  • Life Technologies Corp. v. Promega Corp.: Exportation of a Single Component is Not Subject to Patent Liability Under Section 271(f)(1) of the Patent Act
  • SEC Proposes Dodd-Frank Disclosure Rule Regarding Hedging Policies
  • Nautilus v. Biosig
  • Board-Adopted Forum Selection Bylaws Upheld by Delaware Court of Chancery
  • FCC Clips Lyft’s Wings
  • SEC Approves NYSE, NYSE MKT and NASDAQ Compensation Committee Listing Standards
  • US No Longer Safe Harbor for European Data
  • AK Migration: Recent Ruling Allows a Shareholder Lawsuit to Proceed After a Negative Say-on-Pay Vote: Quirk or Harbinger?
  • SEC Offers Additional JOBS Act Guidance
  • AK Migration: PCAOB Floats Possibility of Mandatory Audit Firm Rotation
  • AK Migration: DC Circuit’s Proxy Access Decision to Stand, but SEC to Allow “Private Ordering” of Proxy Access
  • AK Migration: The ADIPEC Report – Lower Oil Price Renews Focus on Middle East
  • AK Migration: Rights in Information: Conversion and Misappropriation Causes of Action in Intellectual Property Cases
  • Acquiring and Transferring Energy Technology, Andrews Kurth Middle East Newsletter
  • SEC Staff Issues Guidance on Verifying Accredited Investor Status
  • Supreme Court Makes Landmark Rulings on Attorney Fees in Patent Cases
  • Amended Statute Harmonizes Texas and Federal Trade Secret Protection and Litigation
  • Proposed Delaware Legislation Would Prohibit Fee-Shifting Provisions for Stock Corporations
  • The En Banc Federal Circuit Holds That Patent Rights Are Not Exhausted by Prior Restricted Sales or by Foreign Sales
  • SEC Considering Possible Revisions to Audit Committee Disclosure Requirements
  • Obama Administration Announces Financial Regulatory Overhaul
  • Administration Unveils Over-The-Counter Derivatives Reform

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