Special Counsel

Halina S.

Dziewit

Halina Dziewit, a Certified Licensing Professional (CLP), has substantial experience in the intellectual property field, and was among the early practitioners to advance the concept that intellectual assets are valuable property interests 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.

Ms. Dziewit advises clients on domestic and international licensing, technology transfer, business and complex high technology transactional matters, involving all aspects of intellectual assets, and general business matters. Ms. Dziewit also is knowledgeable in US and international business transactions involving specific intellectual property areas including patents, trademarks, trade secrets, copyrights, software, Internet and confidential know-how and information matters.

Ms. Dziewit has extensive experience with intellectual property matters affecting the commercial, nonprofit, government (e.g., FAR, DFARS) and academic sectors. She also has worked with numerous 8(a) companies in connection with intellectual property and transactional technology matters. She has extensive experience with technology transfer under the various U.S. Technology Transfer Acts (e.g., Bayh-Dole and Stevenson-Wydler). She has also worked on international technology transfer matters in Europe, Austrailia and Asia. Additionally, she has provided advice, counsel and support in litigation matters involving work-for-hire issues related to software, copyright infringement, trademark infringement, domain name disputes, patent infringement, employment agreements, conservation tax easement matters, OSHA citations and licensing disputes. She has also provided counsel to and worked with numerous start-ups (for which she provided organizational advice and facilitated organizational structure) as well as a wide range of companies from small local entities to those appearing in the Fortune 100.

Ms. Dziewit regularly counsels clients in a variety of high technology areas and arrangements, including mobile devices, communication devices, computer hardware and software, commercial novelty products, nanotechnology, semiconductor, applications, Internet, 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 and a variety of mechanical and electrical devices, and software arrangements such as VARs, EULAs, SaaS, PaaS, Apps, subscription agreements; GNU/GPL license, cyber secuirty, privacy practices (U.S. and International); Internet notices (e.g. privacy notices and terms of use.. Ms. Dziewit also performs intellectual property audits, due diligence and intellectual property valuations. She acquired in-house experience at Bell Laboratories, Storage Technology Corporation, University Corporation for Atmospheric Research/National Center for Atmospheric Research, WITI Corporation and WITI Pacific, Ltd.

Legal Assistant

Katie Lyon

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.

Halina’s Blog

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