Jeffrey H. Rosedale Ph.D.

Partner

Philadelphia
T +1.215.564.8969
F +1.215.568.3439

Overview

Jeff Rosedale works with clients on the cutting edge of science and technology. He is a registered U.S. patent lawyer, a Ph.D. holder in chemical engineering, an inventor, a frequent lecturer on intellectual property (IP), a frequently cited author for more than 15 peer-reviewed technical publications, and a business professional. Jeff helps clients, including many startup and early-stage companies, in fields such as biotechnology, pharmaceuticals, medical devices, nanotechnology, advanced materials, 3D printing, electronics, artificial intelligence and computer science to develop and protect their IP. Venture capital and private equity firms call upon Jeff for critical evaluations of the IP portfolios of their target investments. His extensive technical background enables him to work well with clients who seek his creativity in developing IP strategies, patent portfolios and licensing strategies. Jeff's clients also look to him for drafting IP-critical agreements such as licenses, joint-development agreements and joint-venture agreements. Through his many outreach activities with students, scientists, engineers and business professionals at the local and national levels, Jeff maintains a strong network throughout the innovation infrastructure of the United States. 

Select Experience

  • Counseled an emerging biotechnology company in the area of orphan drug biologics on all IP matters. Established the IP strategy, developed the IP portfolio, handled all IP-related agreements (NDA, JRA, licensing) with joint development partners, developed freedom-to-operate (FTO) strategies and opinions, and represented the company during multiple licensing and acquisition opportunities, culminating in the sale of the company in excess of $100 million.
  • Was hired by a prominent Silicon Valley venture capital firm to handle the IP development and patenting strategies for an early-stage company that was developing a variety of nanocomposite materials. Developed licensing strategies for the resulting IP portfolio arising from a university research program. Worked with the university technology transfer office to establish an invention disclosure review and patent drafting process.
  • Worked extensively with university researchers to develop a pioneering patent in the field of bionanotechnology for genomic-length DNA management and analysis that was cited in MIT Technology Review as "one of the top ten technologies to impact your life." Developed the IP strategy and patent portfolio for the early-stage company/licensee of this bionanotechnology. Represented the company and handled the IP due-diligence activities of the company through three rounds of financing (Angel, Series A, Series B).
More »

Experience

  • Counseled an emerging biotechnology company in the area of orphan drug biologics on all IP matters. Established the IP strategy, developed the IP portfolio, handled all IP-related agreements (NDA, JRA, licensing) with joint development partners, developed freedom-to-operate (FTO) strategies and opinions, and represented the company during multiple licensing and acquisition opportunities, culminating in the sale of the company in excess of $100 million.
  • Was hired by a prominent Silicon Valley venture capital firm to handle the IP development and patenting strategies for an early-stage company that was developing a variety of nanocomposite materials. Developed licensing strategies for the resulting IP portfolio arising from a university research program. Worked with the university technology transfer office to establish an invention disclosure review and patent drafting process.
  • Worked extensively with university researchers to develop a pioneering patent in the field of bionanotechnology for genomic-length DNA management and analysis that was cited in MIT Technology Review as "one of the top ten technologies to impact your life." Developed the IP strategy and patent portfolio for the early-stage company/licensee of this bionanotechnology. Represented the company and handled the IP due-diligence activities of the company through three rounds of financing (Angel, Series A, Series B).
  • Served as the IP strategist and patent portfolio developer for a number of emerging clean technology companies developing a variety of electronic components and control systems for generating, monitoring, managing and controlling renewable electric power in wind, solar, fuel cell, battery storage and electric vehicle applications.
  • Served as the IP strategist for a company developing bleeding edge high-speed electro-optic modulators for use in fiber-optic networks. Analyzed an extensive patent portfolio and established that the company owned a number of pioneering patents covering its market. Developed licensing strategies. Counseled senior management and the board of directors during the sale of the company to a leading multinational internet equipment company. Increased the company’s valuation by nearly $70 million through a formalized IP analysis and licensing strategy.
  • Served as IP counsel to a company developing lightweight composite components for use in the transportation industry.
  • Advised several state-based venture capital funds regarding the IP portfolios of various emerging stage companies in nanomaterials and medical devices.
  • Represented a Silicon Valley venture capital firm during its investment in a "green" wastewater treatment company. Analyzed the target company's IP portfolio and related IP ownership issues.
  • Served as IP counsel for an emerging-stage women's healthcare company. Developed an IP strategy and patent portfolio with the company's founder, a prominent obstetrician/gynecologist. Counseled the company through several licensing and joint development opportunities.
  • Served as the temporary in-house patent counsel for the ophthalmic device division of a multinational healthcare company.

Recognitions and Memberships

Recognitions

  • Pennsylvania Super Lawyers "Rising Star" (2008, 2011)
    • "Top Young Patent Lawyer in Pennsylvania" (2008)
  • Managing Intellectual Property "IP Star" in Pennsylvania (2013)
  • Ben Franklin Technology Partners of Southeastern Pennsylvania: Recognition for Distinction of Service to the Nanotechnology Commercialization Review Committee (2008)
  • Wharton Business Plan Competition
    • Mentored Grand Prize Winners (2006 and 2008)
    • Mentored Second Place "People’s Choice Award" Winner (2008)

Memberships

  • New Jersey Technology Council: Board of Directors (2008 to present)
  • NanoBusiness Alliance: Board Member (2010 to present)
  • Intellectual Property Owners Association (IPO): Emerging Technologies Committee Member (2013 to present)
  • Benjamin Franklin Inn of Court in the Eastern District of Pennsylvania: Past President
  • American Intellectual Property Law Association (AIPLA)
  • Philadelphia Intellectual Property Law Association (PIPLA)

Industries

Prior Positions

  • Woodcock Washburn LLP
    • Nanotechnology Practice Group: Chair
    • Cleantechnology Practice Group: Chair
  • Rohm and Haas Company (1993 to 2002)
    • Patent Counsel
    • Patent Agent
    • Research Patent Liaison
    • Corporate Exploratory Research Scientist in Advanced Materials
  • University of Minnesota: Research and Teaching Assistant (1989 to 1993)
  • AT&T Bell Laboratories: Member of the Technical Staff (1986 to 1989)

Admissions

  • U.S. District Court, Eastern District of Pennsylvania
  • U.S. Patent and Trademark Office, Registration No. 46,018
  • Pennsylvania

Education

  • J.D., Temple University Beasley School of Law, 2001
  • Certificate in Business Management, University of Pennsylvania, Wharton School of Business, 1996
  • Ph.D., Chemical Engineering, University of Minnesota, 1993
  • M.E., Chemical Engineering, Stevens Institute of Technology, 1988
  • B.S.E., Chemical Engineering, Princeton University, 1986, cum laude