Overview

Jeff Dodd has more than 40 years’ experience helping companies with their corporate, securities, intellectual property and technology transactions. His clients range in size from Fortune 50 companies to emerging businesses.

Jeff has extensive corporate, securities and corporate finance experience, including public and private securities offerings, merger and acquisition transactions, joint ventures, corporate partnering and similar arrangements, private debt and equity financing transactions (including private equity and venture capital), and regulatory, governance and compliance matters.

Jeff advises clients concerning their IP strategy and monetization programs, licensing and joint venture transactions and data security, privacy and protection issues. Jeff is the co-author of Modern Licensing Law with University of Houston Law Center Professor and former Dean, the late Ray Nimmer. The treatise covers all aspects of intellectual property licensing and has become one of the industry’s most respected publications on the topic. He also became co-author of Drafting Effective Contracts also with Professor Nimmer. Jeff is routinely asked to write, speak and present on various topics.

Jeff continues to serve his alma mater as a University of Houston Honors College Advisory Board Member. He is also a past President and former board member of the University of Houston Law Foundation. He is a lifetime fellow in both the Texas Bar Foundation and Houston Bar Foundation.

Experience

Corporate, Securities and Corporate Finance: experience in diverse domestic and international corporate transactions, including:

  • representing various participants in public and private merger and acquisition transactions
  • representing issuers and underwriters (and investment bankers) in connection with public and private securities offerings
  • representing private equity, venture capital and other investment groups or funds, as well as portfolio companies in structuring, documenting and negotiating investment arrangements
  • structuring, negotiating and documenting the formation of private equity, venture capital and hedge funds
  • advising regulated entities (including broker/dealers and investment advisers) as to regulatory and compliance matters
  • structuring, negotiating and documenting joint venture, corporate partnering and similar arrangements

Intellectual Property, Technology, Data Security, Electronic Commerce and Commercialization: extensive experience in a variety of domestic and international intellectual property, information, and business process-related transactions, including

  • representing various parties in structuring, negotiating, enforcing, and unwinding licensing transactions, domestic and international, in numerous industries, including energy, computer technology, biotechnology
  • negotiating, enforcing and unwinding ERP and outsourcing arrangements
  • advising domestic and international clients on data protection, security breach, security and privacy laws and devising compliance strategies
  • structuring, negotiating, documenting and unwinding strategic ventures and alliances where intellectual property is the core asset
  • planning, design and implementation of electronic commerce and trading strategies and arrangements, domestic and international
  • counseling, structuring, negotiating, and documenting intellectual property and information, acquisition, commercialization transactions

Accolades

Honors & Recognitions

  • Ranked among IAM Global Leaders (2022-2024), Intellectual Asset Management
  • Highly Recommended for Patent Transactions in Texas (2012-2014, 2016-2023) in the IAM Patent 1000, Intellectual Asset Management
  • Named a Transactions Star (2021-2023), Trademark Star (2016-2023), and Patent Star (2016-2019) in the IP STARS Handbook, Managing Intellectual Property
  • Selected as Lawyer of the Year for Information Technology Law, Texas, The Best Lawyers in America, 2020.
  • Recognized as a Acritas Star for outstanding performance (2018)
  • Lawyer of the Year in Information Technology Law in Houston, Best Lawyers (2013 and 2016)
  • Who’s Who in Law, Intellectual Property, Houston Business Journal (2015)
  • Recipient, 2015 Dean’s Award, University of Houston Law Center
  • Recipient, 2014 Distinguished Service Award, Institute of Intellectual Property and Information Law, University of Houston Law Center
  • Recommended for Patents: Licensing (2017-2018, 2020), Copyright (2017-2019), Trademarks: Litigation (2018-2019), Trademarks: Non-Contentious (2018-2019), Patent: Litigation (Full Coverage) (2017), Patent: Prosecution (2017) and Outsourcing (2013-2014), Legal 500 United States
  • Named a “2012 BTI Client Service All-Star” by BTI Consulting Group
  • The Best Lawyers in America, Corporate Law and Information Technology Law (1999-2019, 2023-2024)
  • Profiled as one of the leading Technology (2005-2009) and Intellectual Property (2010-2018) lawyers in Texas, Chambers & Partners USA: America's Leading Business Lawyers
  • Recognized as a Texas Super Lawyer, Super Lawyers by Thomson Reuters (published in Texas Monthly) (2003-2005, 2011-2019)
  • AV Preeminent rating in Martindale-Hubbell

Affiliations

Professional

Member

  • Houston Bar Association
    •  Life Fellow
  • State Bar of Texas
    • Electronic Commerce Sub-Committee
    • Business Law Section
  • American Bar Association
    • Section on Business Law
    • Section on Intellectual Property Law
    • Forum Committee on Franchising
  • Licensing Executives Society
  • American Intellectual Property Law Association
  • International Association of Privacy Professionals (IAPP)

Past President and Board Member - University of Houston Law Foundation

Advisory Board Member - Honors College of the University of Houston

Fellow - Texas Bar Foundation, Houston Bar Foundation

Insights

Events & Speaking Engagements

Speaker

  • “Impact of Court Decisions on Licensing Practice” LES Houston Chapter Meeting (July 2017)
  • “First Impressions About Impression Products” IPO Licensing Committee (July 2017)
  • “International Licensing Law: Commercial Transactions in IP Across Boundaries” IIPLA 3rd Annual Global IP Summit (June 2017)
  • “2017 Licensing Law Update” 15th Annual Rocky Mountain Intellectual Property and Technology Institute (June 2017)
  • “Licensing, Commercializing and Investing in Information Assets” Lecture at Beijing Zhong Guangcun Hi-tech Park (November 2016)
  • “Accelerating International Intellectual Property Cooperation” Beijing Zhong Guangcun Hi-tech Park (November 2016)
  • "Commercializing and Investing In Technology: a Perspective From Three Industries" Association of Corporate Counsel Webinar (September 2016)
  • "Internet of Things and the Law: Connectedness of Things and The Disconnectedness of Legal Concepts" World Law Group (September 2016)
  • “Patent Licensing Basics” IPO Licensing Committee (August 2016)
  • "Lawyers Leading the Race to Cybersecurity: Insulating Your Organization from a Data Breach" Association of Corporate Counsel (August 2016)
  • "Understanding Technology and Licensing Agreements" 2016 Professional Education Broadcast Network Webinar (July 2016)
  • "New Trends and Strategies: The Emerging Information Law Merchant" IIPLA 2nd Annual Global Summit (June 2016)
  • "IP Transactions: Licensing" IIPLA 2nd Annual Global Summit (June 2016)
  • "2016 Licensing Law Update" 14th Annual Rocky Mountain Intellectual Property and Technology Institute (June 2016)
  • "Digital Creativity & Culture Reimagined: Transforming Creativity and Access to Creative Works through the Digital Revolution" University of Houston Law Center (April 2016)
  • “Equity Crowdfunding: New Rules and Comparison with Other Funding Alternatives” Houston Technology Center (March 2016)
  • Lexmark: Licensing After the En Banc Decision” IPO Chat Channel Webinar (March 2016)
  • “Licensing, Commercializing and Investing in Information Assets” Zhengzhou Hi-Tech Industrial Park, China National IP Bureau (Beijing), and Suchou University (October 2015)
  • “2015 Licensing Trends” 10th Annual Advanced Concepts in Licensing IP and Technology Conference, Seattle (August 2015)
  • "Licensing Law Update," 13th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (May 2015)
  • “Technology Licensing & IP Rights”, International Intellectual Property Law Association 2015 Annual Congress (January 2015)
  • “Licensing, Partnering, and Strategic Alliances,”  BIO Boot Camp 2014, San Diego (June 2014)
  • "2013 Licensing Law Update," 12th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (May 2014)
  • "Intellectual Property Strategies for the Emerging Company—Panel Discussion," 12th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (May 2014)
  • “Commercializing and Investing in Technology: A Perspective from Three Industries,” (Panel Presentation) ACC Houston General Chapter Meeting (May 2014)
  • “Acquiring and Transferring Energy Technology,” Intelligent Energy Law in the Middle East Seminar, Aberdeen (February 2014)
  • “2013 Licensing Law Update," 8th Annual Advanced Conference on Licensing IP and Technology, Seattle (August 2013)
  • “Sale v. License in IP Contracting,” 11th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (May 2013)
  • "2013 Licensing Law Update," 11th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (May 2013)
  • “Audit Response Letters,” 10th Annual Advanced Business Law Conference, Houston (November 2012)
  • “Current Top Ten Issues Drawn From Recent Cases,”  IP and Technology Licensing Conference, Houston (October 2012)
  • “Issue Spotting and Negotiating Strategies in a Complex License,” IP and Technology Licensing Conference, Houston (October 2012)
  • “Patent Pools, Standards and the Theory and Practice of Licensing,” Beijing Normal University Law School, Beijing (October 2012)
  • "Commercializing University IP: Building Bridges Between Academia and Commerce (the US Experience)," East China University of Science and Technology, Shanghai (October 2012)
  • “Patent Pools, Standard Essential Patents and FRAND,” Taiwan (October 2012)
  • "2012 Licensing Law Update," 7th Annual Advanced Conference on Licensing IP and Technology, Seattle (August 2012)
  • "2012 Licensing Law Update," 10th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (June 2012)
  • "Licensing Issues in Major Corporate Transactions," 10th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (June 2012)
  • “Advanced Licensing Workshop: Negotiating and Drafting Indemnification and Limitation of Liability Provisions,” 25th Annual Technology Law Conference, Austin (May 2012)
  • “US IP Licenses and Secured Finance,” International Bar Association, 18th Annual Global Insolvency and Restructuring Conference, Helsinki (May 2012)
  • "Trends in Electronic Contracting 2011," CLE Presentation (October 2011)
  • "IP Commercialization Strategies," CLE Presentation (September 2011)
  • "What Recent Licensing Cases Tell Us" and "Anatomy of a Complex License," IP Licensing, Seattle (August 2011)
  • "Licensing Law Update" and "Anatomy of a Complex License," 9th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (June 2011)
  • "Theories and Practices of Technology Licensing," Renmin University Law School—Intellectual Property Institute, Beijing, China (April 2011)
  • "International IP Protection Under Conditions of Economic Globalization," Beijing Normal University—Law School, Beijing, China (April 2011)
  • "Copyright Law Update,"  HIPLA 26th Annual Institute on Intellectual Property Law (October 2010)
  • "Analysis of Trends in Licensing Law" 8th Annual Rocky Mountain Intellectual Property & Technology Institute (June 2010)
  • "What Recent Licensing Cases Tell Us" and "Anatomy of a Complex License," IP Licensing, Seattle (August 2009)
  • "What Business Lawyers Need to Know about Licensing," Professional Education Broadcast Network Teleseminars (August 2009)
  • "Licensing Law Update" and "Anatomy of a Complex License," 7th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (June 2009)
  • "Trademark Licensing—Developments in the Law" IP Licensing (March 2009)
  • "Current Themes in Complex Licensing and What Recent Cases Tell Us" and "Anatomy of a Complex License: Updating your Skills for Efficient and Effective Negotiating and Drafting," IP Licensing in 2008, Seattle (August 2008)
  • "Licensing Intellectual Property," Rice Alliance for Technology and Entrepreneurship (July 2008)
  • "Licensing Law Update" and "Anatomy of a Complex License," 6th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (June 2008)
  • "Electronic Sales Contracts," 2008 ABA Section of Business Law Spring Meeting (April 2008)
  • "What the Recent Cases Teach Us" and "Anatomy of a Complex License," Modern IP Licensing, Phoenix (March 2008)
  • "Electronic Sales of Goods Contracts," 2007 UCC 2/Sales Update," Professional Education Broadcast Network (December 2007)
  • "Modern Licensing for Transactional Attorneys," Professional Education Broadcast Network, Webcast (September 2007)
  • "What the Recent Cases Teach Us" and "Anatomy of a Complex License," Current Issues in Complex IP Licensing, Seattle (August 2007)
  • "Licensing Law Update" and "Licenses in the Courtroom," 5th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (May 2007)
  • "Trends in Licensing: Lessons from Recent Cases," Advanced Intellectual Property Law Seminar Program, Association of Corporate Counsel, Houston Chapter (September 2006)
  • "Licensing Update," 21st Annual Intellectual Assets and Technology Law Institute, Dallas (October 2006)
  • “Modern Licensing Law: Recent Cases and Trends” and “Anatomy of a Complex License,” Modern Licensing Law Conference Austin, Minneapolis, San Francisco, Vancouver (Summer 2006)
  • “IP Roundtable—Current IP Issues,” Dallas (June 2006)
  • “Trade Secret Licenses,” 4th Annual Rocky Mountain Intellectual Property & Technology Institute, Denver (June 2006)
  • “Mergers & Acquisitions Trends and Developments in Public Transactions,” SEC Hot Topics Institute (May 2006)
  • “Negotiating and Structuring the Sale of Private Businesses: Non-Tax Considerations,” Professional Education Broadcast Network (December 2005)
  • “Licensing Law Update- 2004-2005,” 20th Annual Computer and Information Law Institute, Dallas (October 2005)
  • “Fundamentals Of Licensing And Transferring Technology,” Professional Education Broadcast Network (June 2005)
  • “Article 2 Revisions Proposed by ALI-NCCUSL What the Revisions Would Mean to Practitioners,” Professional Education Broadcast Network (February 2005)
  • “Legal Issues in Effective Crisis Management," College Station (January 2005)
  • “Licensing Law Update- 2003-2004” 19th Annual Computer and Information Law Institute, Dallas (2004)
  • “Licensing Law Update- 2002-2003” 18th Annual Computer and Information Law Institute, Dallas (2003)
  • "Attack Web Sites" Fifth Annual Doing Business Online Conference, Seattle (2003)
  • "Licensing Law Update 2001-2002" and "New Developments Affecting E-Commerce" 17th Annual Computer Information Law Institute, Dallas (2003)
  • "E-Commerce: Alive and Kicking," Business Section, State Bar of Texas, Houston (2003)
  • "Attack Web Sites: Offense and Defense," Practicing Law Institute (April 2002)
  • "Strategies and Structures for Commercializing Internally Developed Technologies," Fourth Annual Doing Business Online Conference, Seattle (2002)
  • "Overview of Intellectual Property for the Business Lawyer," Houston (2002)
  • "Licensing Law Update 2001-2002," 16th Annual Computer and Information Law Institute, Dallas (2002)
  • "New Developments Affecting Doing Business Online," 16th Annual Computer and Information Law Institute, Dallas (2002)
  • "E-Procurement and E-Contracting in Government Contracts: The Impact of Electronic Contracting Legislation," eGovernment Conference, San Diego (2002)
  • "The Impact of the PATRIOT Act on Electronic Transactions, Surveillance, and Privacy," Practicing Law Institute, New York and San Francisco (2002)
  • "Default Rules in Information Transactions and Commentary on UCITA," 39th Annual Institute on Intellectual Property Law, Southwestern Legal Foundation, Dallas (November 2001)
  • "Electronic Contracting and Intellectual Property and Dissecting Electronic Commerce Websites," Third Annual Conference on Doing Business Online, Seattle (October 2001)
  • "Licensing Law Update and Selected Current Issues in Intellectual Property and Information Transactions," 15th Annual Computer and Information Law Institute, Dallas (September 2001)
  • "International Joint Ventures and Transactions," FEI, Austin (2001)
  • "International Perspectives on Electronic Commerce Legislation," Cyber Law Conference, Fundao Luso-Americana, Lisbon, Portugal (June 2001)
  • "New Electronic Commerce Legislation: ESIGN, UETA, UCITA and the European E-Signature Directive," various venues (2001)
  • "Understanding Electronic Contracts—Certain Default Rules in Information Transactions," PLI (2001)
  • "Intellectual Property Law 2001 Course, Copyright Update," State Bar of Texas (2001)
  • "E-Commerce Models and Legal Developments," various venues (2001 and 2002)
  • "Building a Cathedral Over the Bazaar: A Preliminary View of Certain Licensing Practices in the Open Source and Free Software Communities," Second Annual National Conference on Doing Business Online (October 2000)
  • "Licensing Law and UCITA Overview," 14th Annual Computer and Information Law Institute (September 2000)
  • "Certain Default Rules in UCITA: Common Contractual Principles in Information Transactions," PLI (April and May 2000)
  • "E-Commerce Models," ARMA Spring Conference (April 2000)
  • "Problems with Electronic Records: Evidence, Abuse and Privacy," ARMA Spring Conference (April 2000)
  • "A Preliminary Analysis of Certain Default Rules in the Uniform Information Transactions Act," Georgetown (February 2000)
  • "New Hazards for the Business Lawyer: Hidden Intellectual Property Claims," Business Law Survival Course, Texas State Bar Continuing Legal Education Seminar (1999)
  • "Licensing in the Mass Market, Software and Database Licensing: Current Trends and Proposed New Laws," PLI (April and May 1999)
  • "Article 2B: Commercial Lawyers Invade the Land of Intellectual Property Redux," 11th Annual Computer Law Conference (July 1998; also Federal Bar Association Annual Meeting, October 1998, and American Corporate Counsel Association Annual Meeting, November 1998)
  • "Article 2B: Commercial Lawyers Invade the Land of Intellectual Property," Intellectual Property Law Institute (1998)
  • "Responding to Inquiries from Regulatory Authorities," Rice Graduate School of Business, Houston, Texas (1998)
  • "Licensing Law 1995/1999," 13th, 12th, 11th, 10th, and 9th Annual Computer & Information Law Institutes (1995-1999)
  • "Contracting in Cyberspace," Cyberspace Law: A US and European Perspective (1997)
  • "Software Development Agreements and Software License Agreements," Counseling High Tech Clients (1996)
  • "The Securities and Exchange Commission's 1996 Amendments to the Rules Under Section 16 of the Securities Exchange Act of 1934," Houston Chapter of the American Society of Corporate Secretaries, Houston, Texas (1996)
  • "Secured Financing for High Technology Companies," Commercial Lending Institute, Southern Methodist University, Dallas, Texas (1996)
  • "Power Struggles in Privately Held Companies," The University of Texas School of Law 18th Annual Securities Regulation and Business Law Problems, Austin, Texas (1996)
  • "Law in the Information Age: Constructing the Information Highway," 1995 Computer & Telecommunications Law Update, Washington, DC (1995)
  • "System Integration Contracts," Eighth Annual Computer & Information Technology Law Institute (1994)
  • "Rights In Information: Conversion as a New Cause of Action In Intellectual Property Cases," 10th Annual Institute on Intellectual Property Law (1994)
  • "System Development Contracts," Seventh Annual Computer & Information Technology Law Institute (1993)
  • "Merger and Acquisition Transactions in the United States," Euromoney Institute, Mexico City (1992)
  • "New Developments in Corporate Compliance" (1992)
  • "Software Licensing: Comparison of Model Acts v. Model Agreements," American Bar Association Annual Meeting (1992)
  • "Acquiring Troubled Companies," Advanced Corporate and Securities Law Institute (1991, 1992, 1993)
  • "Guaranty and Suretyship," 20th Annual Institute on the Uniform Commercial Code (1986)

Teaching

  • Visiting Professor of Law, Beijing Normal University Law School (2011-2013)
  • Intellectual Property and Information Law Program, Licensing Law, Teaching: Adjunct Professor of Law, University of Houston Law Center (1999, 2000, 2001)
  • American Constitutional Law Course, University of Houston, Political Science Department (1994, 1995)
  • Adjunct Professor of Law, South Texas College of Law, Business Planning (1989 and 1990)
  • June 1-2, 2023
    Event
    Presenter
    2023 Licensing Law Update, 21th Annual Rocky Mountain Intellectual Property & Technology Law Institute
  • May 2022
    Event
    Speaker
    New Regulatory Developments With The Corporate Transparency Act, 20th Annual Choice, Governance & Acquisition of Entities Conference, Dallas, TX
  • November 2021
    Event
    Speaker
    The New Corporate Transparency Act: What You Need to Know, 19th Annual Advanced Business Law Course, Houston, TX
  • July 2021
    Event
    Speaker
    Corporate Transparency Act Developments, Houston Real Estate Lawyers Meeting
  • June 2021
    Event
    Speaker
    2021 Licensing Law Update, 19th Annual Rocky Mountain Intellectual Property & Technology Law Institute
  • April 2021
    Event
    Speaker
    The Need for a Global Framework for Knowledge Transactions: Cross Border Licensing and Enforcement–Update, TRIPS at 25 Webinar Series: TRIPS and Trade in Knowledge, World Trade Organization
  • January 22, 2020
    Event
  • June 2, 2017
    Event
    15th Annual Rocky Mountain Intellectual Property & Technology Law Institute
  • March 16, 2017
    Event
    United Nations Commission on International Trade Law
  • June 6, 2016
    Event
    International Intellectual Property Law Association 2016
  • June 2, 2016
    Event
    Rocky Mountain IP & Technology Institute 2016
  • April 21, 2016
    Event
    World Intellectual Property Day 2016
  • February 3, 2016
    Event
    Subsea Expo 2016
  • November 19, 2015
    Event
    The General Counsel Forum Magna Stella Awards Dinner
  • August 20, 2015
    Event
    10th Annual Licensing Technology and IP Conference
  • February 26, 2015
    Event
    Deepwater Technology Symposium: SURF Barriers to Innovation, Technology Adoptions and Cost Effective Deployment
  • November 11, 2014
    Event
    Intelligent Energy Law in the Middle East - Protecting and Exploiting Advanced Energy Technology and Know-How
  • September 11, 2014
    Event
  • February 6, 2014
    Event
    Intelligent Energy Law in the Middle East – Protecting and Exploiting Advanced Energy Technology and Know-How
  • April 11, 2013
    Event
    Rice Business Plan Competition 2013

Publications

News

Education

JD, University of Houston Law Center, summa cum laude, 1979

BA, University of Houston, magna cum laude, 1976

Admissions

Texas

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