Litigator, Intellectual Property Counsel, Company Counsel, and Business Strategist
Mr. Weinstein is a seasoned attorney with over 20 years of experience providing counsel to companies of all sizes, from startups to Fortune 100 companies, focused on intellectual property and business matters. Doug specializes in guiding companies through their toughest business issues and disputes. Doug also assists clients in building and leveraging their intellectual property portfolios, while navigating around competitors’ intellectual property. He is one of a few attorneys with experience in both the transactional and litigation aspects of business enabling him to provide a valuable perspective in both corporate acquisitions and disputes.
Doug also assists companies in general governance and contract issues. His MBA background, including seven years in management with U.S. Steel, and Masters degree in intellectual property bring deep business experience and acumen to the table.
Doug also litigates in criminal and civil court at all levels throughout the State of Georgia through his personal affiliation as an attorney with The Abt Law Firm, LLC.
Doug began his career at powerhouse firms, as a partner at general practice leader Jones Day and a partner at intellectual property giant Finnegan.
Doug’s ten years of experience living in Taiwan and working throughout Asia provide him with valuable insights when working cross-border. Doug’s experience in the technology industry includes software, electronics, semiconductors, telecommunications, mechanical arts, and software platforms.
Perhaps most importantly, Doug recognizes that intellectual property is a business asset. It is a tool that must derive value for the business. Doug keeps that central mission throughout his counsel.
Endoresements
“As Director of the Legal Department in a multi-billion dollar global tech company, I regularly retain outside counsel to help resolve foreign disputes and litigation. In that capacity, I recommended to our management on several occasions that we retain the Finnegan law firm to represent us in IP disputes pending in the US, primarily because I was impressed with Doug Weinstein, and he never let us down. In one case, for example, a half-dozen Taiwan companies were named as respondents in an ITC proceeding and after evaluating several firms we all elected to be represented by Finnegan, pursuant to a Joint Defense Agreement prepared by Doug. Doug met with us several times and skillfully advised us on legal strategy and procedural matters, gathered evidence from each party, drafted expert pleadings and other documents, kept us promptly and clearly informed of developments, and helped secure highly favorable resolutions for all of us. It was an impressive performance, but par for the course for Doug. I recommend him without reservations.” - Chris Neumeyer
“I have worked with Doug on at two very high profile technical / licensing matters over the past 4 years, and Doug has gone above and beyond in all respects. He is trustworthy, dependable and is, most importantly, forthright. He is able to commit himself, even at last minute, to make sure he delivers no less than the best results. Doug is able to grap technical issues, apply sound legal judgement and client counseling. He is very easy to work and does not compromise on his ethics and the quality of his work product. I highly recommend Doug.”
➤ key Expertise
Experience representing TSMC, Microsoft, IBM, HP, Sony, Hon Hai (Foxconn), SAP, Compaq, Sun Microsystems, and Toshiba.
Former partner with Jones Day and Finnegan.
Seven years of engineering and management experience at US Steel.
Experienced trial attorney with thousands of hours of real courtroom trial advocacy. Litigates in Federal courts, as well as Georgia Superior and State Courts
Business experience assisting with day-to-day legal activities for a broad range of companies from small to large entities such as Foxconn, TSMC, and Scientific Atlanta, with a particular focus on business development and software licensing.
Experience representing companies in Silicon Valley, commuting to the Bay Area assisting companies such as Cisco, HP, and Sun Microsystems.
Transactional expertise in intellectual property, including patents and trade secrets, specifically: intellectual property portfolio management, M&A intellectual property due diligence, intellectual property licensing (both out and in); patent preparation and prosecution; opinions; design-around projects; patent mining; and patent analysis.
IP litigation expertise including litigating in Federal district courts, and the U.S. International Trade Commission, as well as state courts of law and chancery. Subject matter of litigation has included patents, trade secrets, copyright, trademarks, contracts, and criminal law
➤ BAckground
University of New Hampshire Law School - JD, Master of Intellectual Property (comparable to LLM)
Vanderbilt School of Engineering - B.E. in Electrical Engineering and Math
University of Alabama Birmingham - MBA
➤ BARS & Courts
Member of Georgia Bar
Member of USPTO Patent Bar
Northern District of Georgia
Georgia Supreme Court
U.S. Court of Appeals, Federal Circuit
Former Member of Taiwan Bar
technology: SAAS & on-prem
As the vendor or host of any software or application, the most important asset you have is likely your intellectual property rights. It's imperative that your licensing and use policies protect your rights while permitting the appropriate use by your customers, including platform Terms of Use, Licensing Agreement, and Non-Disclosure Agreements, for example.
Disputes
With decades of prior litigation experience, Doug asserts his clients’ intellectual property rights and defends clients from assertions of others. Litigation should be a last resort, because it is expensive and often there are no winners. As most intellectual property litigation ends in a settlement prior to any verdict, Doug helps clients find resolution to dispute issues while avoiding costly litigation. However, if litigation occurs, Doug partners with trial counsel to provide legal counsel.
Contracts and employment agreements
The intellectual property aspects of contracts and employment agreements is often overlooked by those without specific intellectual property expertise. Ensuring that your intellectual property is protected by contract is critical. Taking on excessive liability through indemnification, for example, is often one of many different ways that contracts can torpedo small and large businesses.
Patent preparation and prosecution
Whether you are a startup company or in the Fortune 100, patentable ideas form a core of your intellectual property protection. Doug applies over 20 years of experience in patent prosecution and litigation to secure patents that make business sense and provide value, not ones that just lay in a drawer or hang on a wall. Patents are business assets that should drive value.
Trademark preparation and prosecution
Securing your trademark rights can be of even more value than a patent portfolio. Doug guides clients through securing trademark rights and preventing others from infringing on those rights.
Strategic intellectual property counseling
Most patent attorneys instinctively reach for patent protection when approached by a new client, but Doug looks at the full toolbox of intellectual property rights to guide clients to the best protection for their business. Doug has the tools to map out intellectual property rights and opportunities to protect not just what you have now, but get in front of the competition by seeing where the market is heading.
Due Diligence
With experience in due diligence in a mergers and acquisition context, as well as intellectual property purchase situations, Doug will guide you through finding any issues with intellectual property about to be acquired and in shoring up your own intellectual property for possible sale.
Licensing
Whether looking to devise additional revenue streams from licensing your intellectual property, leverage technology licensed in from others, or engage in cross-licensing, Doug provides all the services your business needs to secure intellectual property rights through licensing.
Opinions
To guide you through acquiring and evaluating intellectual property held by competitors and non-practicing entities, Doug provides analysis and thorough opinions to assist in your planning and legal defenses. Doug’s opinions have been successfully used by companies seeking guidance and have been upheld by courts in later litigation.
Corporate counseling
Doug provides business counseling in a wide variety of contractual needs ranging from employment agreements to leases to corporate governance.
trade secrets
Many Fortune 100 companies have 10 or even 50 trade secrets for every patent in their portfolio. Trade secrets are a tricky but underutilized type of intellectual property protection. Doug regularly advises clients on how to document and protect their trade secrets.