Steven J. Frank
Areas of Practice
Steven Frank, a partner in Goodwin Procter's Intellectual Property Group, focuses on advising clients in all areas of intellectual property law, with emphasis on patent prosecution, analysis of infringement and related issues, copyright questions, and the drafting and negotiation of agreements relating to the transfer or license of intellectual property. He has significant experience with general IP diligence, both in investment and M&A contexts. Mr. Frank has negotiated multimillion-dollar domestic and cross-border licenses, as well as technology-transfer agreements involving leading universities and research institutions.
Work for Clients
Mr. Frank advises inventors, companies, investors and underwriters concerning open-source software issues and transactional events involving intellectual property. He also works with technology companies to develop patent portfolios, and oversees the preparation and prosecution of patent applications both in the United States and abroad. Mr. Frank specializes in technology areas including chemistry and biochemistry, semiconductors, computer software and hardware, network/Internet applications and nanotechnology.
Professional Activities
Mr. Frank has been selected for inclusion in Chambers USA: America's Leading Lawyers for Business.
Publications/Presentations
Mr. Frank is the author of Intellectual Property for Managers and Investors, published by Cambridge University Press. Mr. Frank has published numerous articles involving legal aspects of technology, including “Source Out, Risk In,” which appeared in the April 2005 edition of Spectrum. He also authored the legal primer Learning the Law, and the novels The Sell-Out and The Uncertainty Principle. Other articles authored by Mr. Frank include “Reinventing Invention: Will Patent Reform Stifle Innovation?,” Mass. High Tech, September 19, 2005; “Foreign Patents May Not Be Necessary,” New England In-House, May 2004; “The Deal Maker's Minefield,” IEEE Spectrum, April 2004; “Patent Do's and D'Oh!,” (tutorial on patent basics) IEEE Spectrum, March 2003; “Year of the Patent,” (patent protection in China) IEEE Spectrum, January 2003; “Who's Afraid of Open Source?,” IEEE Spectrum, October 2003; “Will Patents Pillage Open Source?,” CNet, April, 2003; “Balancing Act,” (how to negotiate licenses with universities) IEEE Spectrum, June 2002; and “Do...more » Mr. Frank is the author of Intellectual Property for Managers and Investors, published by Cambridge University Press. Mr. Frank has published numerous articles involving legal aspects of technology, including “Source Out, Risk In,” which appeared in the April 2005 edition of Spectrum. He also authored the legal primer Learning the Law, and the novels The Sell-Out and The Uncertainty Principle. Other articles authored by Mr. Frank include “Reinventing Invention: Will Patent Reform Stifle Innovation?,” Mass. High Tech, September 19, 2005; “Foreign Patents May Not Be Necessary,” New England In-House, May 2004; “The Deal Maker's Minefield,” IEEE Spectrum, April 2004; “Patent Do's and D'Oh!,” (tutorial on patent basics) IEEE Spectrum, March 2003; “Year of the Patent,” (patent protection in China) IEEE Spectrum, January 2003; “Who's Afraid of Open Source?,” IEEE Spectrum, October 2003; “Will Patents Pillage Open Source?,” CNet, April, 2003; “Balancing Act,” (how to negotiate licenses with universities) IEEE Spectrum, June 2002; and “Do Reach-Throughs Overreach?,” IP Today, November 2003. less »
Professional Experience
Prior to joining Goodwin Procter in 2005, Mr. Frank was a partner at Testa, Hurwitz & Thibeault in the Patent and Intellectual Property Practice Group.
Education
J.D., Harvard Law School, 1986 (cum laude)
Sc.B., Chemistry, Brown University, 1983 (magna cum laude)
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