Special Counsel

Halina S.

Dziewit

Legal Assistant

Katie Lyon

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Ms. Dziewit has substantial experience in identifying, protecting, exploiting, maintaining, and enforcement of intellectual property (IP), including patents, trademarks, trade secrets, copyrights, proprietary know-how, and confidential information. She was among the early practitioners to advance the concept that intellectual assets are valuable property that should be strategically cultivated, harvested, and exploited to position an asset holder within a technology field and marketplace to obtain the best return on investment. She also conducts IP audits and due diligence reviews. She is also a frequent speaker on a variety of IP topics.

Ms. Dziewit is an accredited Certified Licensing Professional (CLP) for U.S. and international IP licensing transactions. She advises on domestic and international technology, product and service transactions, including technology transfer, strategic business arrangements, and complex technology alliances, such as collaborative R&D, manufacturing, marketing, distribution, software (e.g., VAR, EULAs, SaaS, PaaS, IaaS), confidentiality, consulting, clinical trial and material transfer agreements.

Ms. Dziewit has extensive IP experience in different sectors (both U.S. and international) – private commercial entities (small, medium, and Fortune 100), nonprofits, U. S. Government agencies and federal facilities (e.g., NREL, DOE, DOD, Sandia), foreign government agencies and academic institutions. She also works with numerous start-ups.

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Ms. Dziewit regularly counsels clients in a variety of technology, service, and product areas, including:

 

  • mobile devices, 
  • communication devices, 
  • computer hardware, and software, 
  • novelty products, 
  • nanotechnology, 
  • semiconductor, 
  • apps, 
  • aviation technologies, 
  • atmospheric and weather technologies, and instrumentation, 
  • energy/power technologies, 
  • clean energy and environmental technologies,
  •  pharmaceuticals, 
  • medical instrumentation, 
  • sporting equipment, 
  • educational and instructional material,  
  • transportation
  • activated carbon, 
  • cannabis, 
  • hemp, 
  • CBD,
  • cybersecurity, 
  • privacy practices (U.S. and International); 
  • Internet and Internet notices (e.g. privacy/terms of use), 
  • domain names and web site content and hosting. 

She acquired in-house experience at Bell Laboratories, Storage Technology Corporation and University Corporation for Atmospheric Research/National Center for Atmospheric Research.

 

Experience

General Intellectual Property

Ms. Dziewit provides advice and counsel on the identification of inventions, invention disclosures, freedom to operate considerations, patent filing strategies, facilitates filing provisionals and patent applications, facilitates prosecution, facilitates patent enforcement and defense, including infringement issues, and develops patent portfolio strategies. She also provides advice and counsel for trademarks, including performing initial searches on trademark use, facilitates trademark filing and prosecution, trademark enforcement, and defense, including cease and desist letters. She also provides advice and counsel on copyrights, including copyright filings, trade secret procedures and practices, and proprietary information and data protection practices and procedures.

Licensing/Technology Transfer (UNI & GOVT)

Ms. Dziewit provides advice and counsel on various licensing strategies and terms, both in the U.S. and internationally, for patent applications, issued patents, trademarks, copyrights, trade secrets, and proprietary information and data. She has substantial expertise with the federal technology transfer acts – including, Stevenson-Wydler and Bayh-Dole applicable to university and federal labs that develop technology that has commercialization potential. She was the director of tech transfer for an FFRDC for ten years. She has expertise in federal labs and university spin-offs. She has worked with exclusive and non-exclusive arrangements and worked with a variety of royalty arrangements. She has significant experience reviewing, drafting, and negotiating various license and tech transfer and related agreements such as CRADAs, DUAs, ACTs, SRAs, SBIR, STA, 8(a), and Teaming Agreements.  

Intellectual Property Transactions, Strategies, and Due Diligence.

Ms. Dziewit has over 25 years’ experience in providing advice and counsel on intellectual property matters, including counseling on strategies, reviewing, drafting, and negotiating a wide variety of technology, product, or service contracts in many different technology areas both in the U.S. and internationally. Some agreement examples, research and development, strategic alliance, supply, consulting, distributor, marketing, software licenses (e.g., EULAs, PaaS, SaaS, Subscriber terms, App terms), VARs, MTAs, Clinical Trial, M&A Agreements, Asset Transfer and Sale Agreements, patent licenses, assignments and sales, trademark licenses, assignments and sales, copyright licenses, assignments and sales, trade secret licenses, assignments and sales, and proprietary data and information licenses, assignments and sales, NDAs, MAAP policies and practices, and e-commerce agreements. She provides advice and counsel IP strategies and approaches. She also performs due diligence reviews of intellectual property matters.

Business Organizations and Transactions

Ms. Dziewit provides advice and counsel and strategy on corporate organizational structure. She provides review, drafting, and negotiating on a wide variety of corporate organizational documents, including joint ventures, operating agreements, business organization structure, and due diligence review and opinions. She also provides and reviews relevant agreements for entity use, such as non-disclosure agreements, hiring agreements, board agreements, consulting agreements, non-compete agreements, non-solicitation agreements, proprietary rights (IP) ownership agreements, assignment agreements, term sheets, and LOIs and LOAs.

Government Contracts (FARs/DFARs)

Ms. Dziewit provides advice and counsel on government bids (e.g., RFPs and teaming agreements) and contracts –particularly concerning IP considerations, review, drafting, and negotiating on a wide variety of Government contracts, including supply and consulting transactions and qualification for the GSA schedule. She has dealt with various Government entities and departments, including DARPA, DOD, DOE, CDC, NIH, FAA, Army, Air Force, Navy, NASA, Sandia Labs, Lawrence Livermore, NREL, Homeland Security, and NCAR. She has significant familiarity with FARs and DFARs, both mandatory and discretionary, and specific agency directives and terms for the Prime and Sub-contractor in Government contracts, both federal and state. She has worked on RFPs with clients. She also has worked with 8(a) companies. She also deals with COTS items and includes appropriate language in Purchase Orders and commercial license agreements.

Technology Sectors: High Technology; Biotechnology; Software/Hardware; Mechanical

Ms. Dziewit works in the high-technology field. She has worked on crystals and materials, semiconductors, diodes, and other electrical components and apparatus. She works on communication devices, mobile and other portable devices, lithium batteries, data storage systems, data warehousing, data transmission and receiving, solar energy systems, clean coal processing, activated carbon, atmospheric and weather technologies, aviation technologies, energy, and power technologies, clean energy and power technologies, camera straps, tire changers, containers and other variety of electrical and mechanical devices. She also works in the biotechnology field and has experience in medical instrumentation, drug-eluding stents, cosmetics, lotions, creams for health applications, certain pharmaceuticals, material transfer of viruses, and other chemical compounds for various therapeutic applications. She works in the hardware and software fields, including computer hardware devices, software systems (including object, source, binary and open source), system integration. She has significant experience in computer systems, software systems, apps, virtual reality, augmented reality, data security systems, cybersecurity systems, data warehousing, data storage, data retrieval, data transmissions, data processing, interface, integration, and other hardware and software functionality.

Internet/Applications/Website Content and Notices

Ms. Dziewit advises clients on web site terms and conditions, terms of use, privacy notices, interactive web site agreements (e.g. Subscriber, EULAs, PaaS, SaaS), domain names, app licenses and terms, content, linking terms for third-party sites, commercial terms for products and service purchases, data processing handling and storage, building platforms and interactive platforms, third-party platforms and uses; payment security, on-site warranty and order terms, use of open source and public software licenses, use of third-party copyrighted material, use of third-party trademarks, posting issues and third-party abuse issues, including domain names. 

Cannabis/Hemp/CBD

Ms. Dziewit has worked in the cannabis field for several years. She has provided IP assistance on patents, trademarks, copyrights, and proprietary know-how aspects of cannabis products and services and adjunct products and services. She has facilitated and negotiated transactions in the cannabis field on strategic alliances (both intra and interstate), R&D collaborations, licensing, grow operations, cultivation operations, processing operations (including SOPs), manufacturing facilities, marketing and distribution activities. All transactions are considered in light of legal requirements on a local, county, state, and federal level. She has provided strategies for strategic alliances. She also has provided advice and counsel on insurance issues, tax issues, labeling, FDA compliance, trash disposal compliance, and web site contents. With the passing of the 2018 Farm Bill (Agricultural Improvement Act of 2018), she has provided counsel on hemp and CBD, and various cannabis-derived products, which were removed from the Controlled Substances cannabis description under Schedule 1. She has addressed products related to human consumption and animal consumption and topical applications and use. Hemp is also subject to local, county, state, and federal regulations.

EDUCATION & ADMISSIONS

JURIS DOCTOR

UNIVERSITY OF COLORADO SCHOOL OF LAW, 1981

BACHELOR OF ARTS 

COLORADO UNIVERSITY, 1976

Colorado

1981

Professional Associations

Co-Chair, Certified Licensing Professional Committee (review and approval of applications and renewals of certifications), 2019 

Committee Member for Certified Licensing Professional Approvals

Colorado Bar Association

IUGI Committee Member and Uniform NDA Committee Member, Licensing Executve Society

Licensing Executive Society (LES) member 

AUTM (Association of University Managers) member 

Co-Chair, Boulder Bar Association, Intellectual Property Section 2017, 2018, 2019 

Member, 1 Million Cups Club, Anchorage, Alaska

Publications

Authored chapter in “Inside the Minds,” Intellectual Property Legal Series, 2009 

Authored client alert on state of Cannabis Laws, August 2019

Author, “Got IP Assets? Audit will maximize potential return,” The Law Journal, April 5-18, 2002 

Author, “The Quest for the Paperless Office – Electronic Contracting,” Santa Clara High Technology Law Journal, 5(1), 1989

 

Seminars

Panelist and Moderator, “License Executed! No, You’re Not Done” The Association of University Technology Managers Annual Meeting, March 2017

Numerous presentations on cannabis laws, including intellectual property aspects, to several organizations (National Real Estate and Trust Association, Boulder Bar Association, One-Day General Seminar on Cannabis in California, Entrepreneurs in Anchorage, Alaska in 2016, 2017, 2018)

Presenter, “Intellectual Property Basics,” 1 Million Cups – new entrepreneurs discussion group on new technology developments, Anchorage, Alaska, June 2013

Presenter, “Creating Opportunities in Turbulent Times: Tools for Strategies for Success,” Licensing Executives Society Annual Meeting, October 17, 2011

Presenter, “Fifth Annual Governmental Contracts and Construction Law, October 1-2, 2009

Presenter, “Creating and Leading a World Class Licensing Office,” 2007 Licensing Executives Society Annual Meeting, October 18, 2007

Presenter, “License Agreement Guidelines,” 2007 Colorado Nanotechnology Alliance Conference, September 18, 2007

Presenter on Intellectual Property Issues for 8(a) Companies in Alaska, 2005, 2006, 2007

Presenter, “Intellectual Property Issues for Minority-Owned Federal Contractors,” Alaska 8(a) Association Course: Successful Federal Contracting for Minority and Tribally-Owned Businesses, March 29, 2006

Colorado Internet Chamber Panel Discussion on Intellectual Property Issues, 2003

Biotech Breakfast Briefing on Technology Transfer, 2002

Presented at numerous LES Educational Programs (Programs and Webinars)

Notable Experience (by industry)

INTELLECTUAL PROPERTY PROCEDURES & AGREEMENTS

Established in-house intellectual property processes, procedures and programs at Storage Technology Corporation (acquired by Sun Microsystems and Oracle).

Advised on establishment of hemp grow and distribution business organization and related intellectual property issues.

Advised on, drafted and negotiated contracts in connection with wind profilers and weather radar products to be sold to the US government, involving FAR and DFAR issues.

Performed due diligence and advised on commercial activity related to intellectual property in connection with satellite monitoring systems.

Drafted and negotiated contracts in relation to development and commercial exploitation of data centers.

Advised on the commercial intellectual property aspects of Internet business activities.

LICENSING

Advised on, drafted and negotiated licensing contracts for commercial novelty products involving animated characters.

Drafted template software licenses for use by client for commercial and government distribution containing limited and restricted rights clauses under relevant FAR/DFAR provisions.

Review and advise on patent licenses for specific drug indications.

Advised on licensed technology from a University with respect to BayhDole Act implications that has a projected market potential of US$9.1 billion.

SOFTWARE/INTERNET/SERVICES

Advised on, drafted and negotiated contracts in connection with hardware and software system installations and upgrades for a nonprofit entity, a major food distributor company and a Native American corporation.

Drafted agreements for health care industry for health facilities that integrate 7 software service vendors. Drafted EULA, SAS, PAAS and other services licenses.

Drafted subscriber agreements for dental financial services.

Drafted terms of use/privacy notices for a variety of websites.

Provide advice and counsel on cybersecurity and data privacy.

Provide advice and counsel for various software applications and functionality.

 TECHNOLOGY TRANSFERS

Technology transfer of Federal Aviation Administration (FAA) sponsored nonprofit/academic-developed technology to the commercial sector for use at a number of airports throughout the United States and globally, and licensing of the LLWAS technology to the Hong Kong government for use at the Hong Kong Airport.

Negotiated and drafted ACT with DOE/NREL.

Participated RFP and contract awards with DOD for Air Force and Army.

Established and maintained TTO operations at the University Corporation for Atmospheric Research/National Center for Atmospheric Research and facilitated several successful technology transfers.

HEALTHCARE & LIFE SCIENCES INDUSTRIES

Advised on, drafted and negotiated contracts in connection with medical instrumentation for cardio vascular disease.

Advised on and drafted US and international Material Transfer Agreements between international health organizations, advised on and drafted cooperative agreements with US organizations and agencies (e.g., Center for Disease Control) and advised on, drafted and negotiated International Research Agreements, Clinical Trial Agreements, Manufacture and Distributor Agreements.

Provided advice and counsel in connection with providing IP protection and facilitating commercialization of numerous systems having therapeutic applications.

Provide advice and counsel on IP and business issues related to R&D, consulting and commercialization of cannabis and cannabis- related products, services, methods and processes.

ENERGY INDUSTRY

Advised on, drafted and negotiated contracts on new technology associated with the generation of energy from clean coal processes.

Advised on federally funded and sponsored R&D grants for activated carbon. Advised on intellectual property protection, licensing and commercial transactions in relation to wind energy generation. DOE, public utility and private sector sponsored project.

Advised on, drafted and negotiated value added reseller, distributor, manufacturer and license agreements for installation of solar powered energy systems in the US, Europe and Middle East.

Advised on, drafted and negotiated CRADA with FFRDC in connection with developing new oil drilling technology.

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