Kyle R. Fath

Associate

New York
T +1.212.589.4212
F +1.212.589.4201

Overview

Kyle Fath concentrates his practice on intellectual property, and information technology and transactions. In his intellectual property practice, Kyle helps clients procure, protect and monetize their intellectual property assets, including the procurement, enforcement and licensing of patents, trademarks, copyrights and trade secrets. In his information technology and transactions practice, Kyle drafts and negotiates Software-as-a-Service (SaaS) and other agreements on both the vendor and customer sides in a variety of technology verticals, and helps internet and e-commerce companies proactively address and mitigate legal risks associated with their operations and collection of data. Additionally, working closely alongside M&A teams, Kyle provides due diligence and subject matter advice to help close deals.

Working with clients across such industries as medical devices, FinTech, AdTech, Internet of Things (IoT) and FashionTech, Kyle emphasizes learning the client’s business in order to provide beneficial and practical legal advice. Kyle leverages his legal experience and technical background to work effectively with startup founders, in-house counsel, division managers and C-level personnel and tailors his advice according to their varying perspectives.

Select Experience

  • Drafted a distribution, software license and SaaS agreement for a medical equipment manufacturer’s product utilizing hardware, software and an online SaaS portal.

  • Drafted and negotiated development and IP license agreement on behalf of licensor, an IoT developer, which was licensing its IoT platform to a Fortune 20 company.

  • Drafted and negotiated customer, reseller, value-added reseller and original equipment manufacturer agreements relating to a white label IoT platform of Internet of Things developer.

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Experience

  • Drafted a distribution, software license and SaaS agreement for a medical equipment manufacturer’s product utilizing hardware, software and an online SaaS portal.

  • Drafted and negotiated development and IP license agreement on behalf of licensor, an IoT developer, which was licensing its IoT platform to a Fortune 20 company.

  • Drafted and negotiated customer, reseller, value-added reseller and original equipment manufacturer agreements relating to a white label IoT platform of Internet of Things developer.

  • Drafted numerous vendor SaaS agreements, terms of service and privacy policies across a variety of technology verticals.

  • Negotiated various SaaS and other technology agreements on behalf of customers.

  • Reviewed and negotiated a patent and technology license on behalf of licensor, an aerospace manufacturer, for licensing proprietary technology to a Fortune 25 company.

  • Wrote and negotiated a data license agreement between a medical data analysis company and a large medical institution.

  • Wrote provisions and performed IP due diligence for mergers, acquisitions and other transactions, including the sale of a bourbon brand to a large national distiller, and the joint venture and asset transfer between a U.S. tech startup and an Australian company.

  • Advised an internet company with a variety of website and mobile application properties on data privacy implications of data collection features.

  • Drafted and prosecuted patent applications on various technologies, such as medical devices, aerospace, AgTech, fashion items and accessories, and construction.

Recognitions and Memberships

Memberships

  • Greater Cincinnati Venture Association
  • American Intellectual Property Law Association
  • Cincinnati Intellectual Property Law Association
  • Square1: Board of Directors (2015 to 2017)

Pro Bono

  • For People’s Liberty, a Cincinnati philanthropic organization, prepared terms of use related to a free recording booth open to community members for recording podcasts. Advised client on IP issues related to ownership and broadcasting rights, as well as other legal considerations regarding the recordings.

Industries

Emerging Issues

Prior Positions

  • GE Aviation: Law Clerk

Admissions

  • U.S. Patent and Trademark Office, Registration No. 75,216
  • Ohio
  • [New York Bar admission pending]

Education

  • J.D., Washington University School of Law
  • B.S., Biomedical Engineering, University of Cincinnati