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Frodo FERRO

  • Kilburn & Strode LLP
  • conseil en propriété intellectuelle - associé

London

En résumé

Senior IP counsel with extensive experience in IP management and developing innovative strategies to protect and leverage intellectual property (patents, copyright, know-how).

Broad expertise in global aspects of IP in a multi-jurisdictional setting, gained in senior roles in leading global semiconductor companies, with significant experience in negotiating of complex, high-value, multi-party R&D and license agreements, and standards development in an international setting.

Managing skills obtained as the manager of the EMEA patent department for global companies with responsbility for all intellectual property legal operations in EMEA, including patent procurement and portfolio management, intellectual property licensing and enforcement, intellectual property defensive matters, IP transactional matters, trademark legal matters, and management of both internal and external legal counsel.

Mes compétences :
Patent
Licensing
Contract Negotiation
Expertise juridique
Management
Finance
Propriété intellectuelle
Business strategy
Veille stratégique
Transfer technologique
R&D
Droit des contrats

Entreprises

  • Kilburn & Strode LLP - Conseil en propriété intellectuelle - associé

    Profession libérale | London 2022 - maintenant Our services cover all aspects of intellectual property and technology. Beyond just legal services, we help our clients with the commercial aspects. Ranges from structuring and negotiation transactions (licenses, R&D, standardization), portfolio management, strategy to drafting and prosecution of patent applications, oppositions, defensive and offensive litigation.

  • Hoffmann Eitle - Patent lawyer and Managing Director Netherlands

    2018 - maintenant Managing the Dutch office of Hoffmann Eitle - one of Europe's largests IP law firms.

    Responsible for starting and developing the Dutch office of Hoffmann Eitle. Started from zero to being a profitable firm in 2 years time.

  • Los & Stigter - Conseil en propriété intellectuelle

    Profession libérale | Amsterdam 2016 - 2018 General IP-related counseling covering legal and commercial aspects. Ranges from structuring and negotiation transactions (licenses, R&D, standardization), portfolio management, strategy consultancy to drafting and prosecution of patent applications, oppositions, defensive and offensive litigation.

  • NXP Semiconductors - Lead counsel standardization and IP valorisation and contracts

    Colombelles 2015 - 2016 Dual lead counsel role:

    Lead legal counsel for standardization in an organisation active in 100+ public and private standard bodies. Responsibilities covered all areas of law - ranging from structuring consortia developing standard specifications, negotiating policies and bylaws through, anti-trust compliance to licensing in and out patents and technology related to standards .

    Lead counsel for IP valorisation and contracts for 2 business units with a total turn-over of 1 billion USD. Responsibilities included:
    - counseling senior management on legal and commercial aspects of IP;
    - valorization of IP in allignment with BU strategies and roadmaps;
    - handling key IP related transactions. Lead negotiator for patent and technology licensing in and out, R&D alliances, etc.;
    - dealing with tax aspects of IP, such as French R&D tax break and structuring of IP licenses.

  • Freescale - Senior IP Counsel EMEA

    Toulouse 2007 - 2015 Overall responsibility for IP (patents, copyrights, trademarks, etc) in EMEA, including:
    management of EMEA patent operations, including administrative team responsible for patent filings and docketing, legal process outsourcing (patent drafting and prosecution), and portfolio management (>1300 patents families);
    counseling senior management on legal and commercial aspects of IP;
    handling key IP related transactions (licensing in and out, R&D alliances, etc) and negotiating corresponding contracts.
    Corporate responsibility for IP aspects related to development and use of industrial standards.

  • Freescale - Patent counsel EMEA

    Toulouse 2006 - 2007 Overall responsibility for patents of EMEA’s automotive business, including invention harvesting and evaluation, drafting and prosecution of patent applications, portfolio management, freedom to operate and infringement analysis, and litigation support

  • Vereenigde - Patent attorney

    2000 - 2006 Drafting and prosecution of patent applications, oppositions, defensive and offensive litigation. General IP-related advice, such as freedom to operate, portfolio management, drafting licensing agreements.

    Lead responsibility for a mixed client portfolio of SME’s, multinationals like Neopost, DeLaval, SAP and Ericsson, and public research institutes like the Dutch institute for radio astronomy and the academic hospital of the University of Maastricht.

Formations

Pas de formation renseignée

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