William H. Pratt

Partner

William Pratt's practice is focused on intellectual property transactions and licensing, government contracts, and the arbitration of intellectual property disputes. His clients include U.S. and international corporations involved in a broad spectrum of technologies, including automotive, consumer electronics, pharmaceuticals, environmental, chemical, and cosmetics. He has represented some of the world’s largest international companies as well as small startups.

Mr. Pratt's experience ranges from drafting simple license agreements to negotiating extremely complex transactions such as joint venture agreements, creating standard-setting organizations, commercialization agreements, and technology acquisitions. He also has extensive experience representing clients in intellectual property transactions and disputes with the U.S. government and negotiating complex agreements to settle litigations between private entities and resolving disputes with the U.S. government. Mr. Pratt has also arbitrated licensing and contract disputes within the United States and abroad.

Mr. Pratt lectures extensively on intellectual property licensing and government contracting, including presentations to corporations, law and business schools, government organizations, the American Intellectual Property Law Association, and the Licensing Executives Society (U.S.A., Canada, and International). He also teaches a course for attorneys and licensing professionals on "Drafting Patent License Agreements" for the Patent Resources Group and has taught patent licensing at law schools.

Highlights

• Negotiated a Memorandum of Understanding between the U.S. Department of Energy and a foreign corporation addressing intellectual property created under future research contracts.
• Negotiated an agreement between nine major automobile companies establishing the Automotive Multimedia Interface Collaboration—a standard-setting organization created by the eight major automobile manufacturers.
• Provided lectures to attorneys for the U.S. Department of Energy and its National Laboratories on conducting research agreements with private companies.
• Administered the export control program worldwide for Litton Industries.
• Served as confidential assistant to the U.S. Deputy Assistant Secretary of Commerce during the Reagan Administration.

Professional Recognition

• Listed in Intellectual Asset Management (IAM) Magazine as one of 250 of the world's leading patent and technology licensing practitioners, 2011; recommended for patent licensing in the D.C. area, 2012.
• Elected, in graduate school, to Pi Alpha Alpha and received the 1982 United States Presidential Management Intern Award.

Professional Activities

• District of Columbia Bar
• State of Maryland Bar
• American Bar Association
• American Intellectual Property Law Association
• Licensing Executives Society

Select Publications

• "The Collaborative Research House that Bayh-Dole Built: Perfectly Constructed or in Need of Repairs?" les Nouvelles, Dec. 2010.
• "The 'Deemed Export' Rule: Foreign Nationals in U.S. Companies," Journal of the Customs Intellectual Property Information Center (Japan), June 1999.
• "Going International: Fundamentals of International Business: Intellectual Property Rights What Are They and How Does a Company Secure Them?" International Trade for the Nonspecialist, 1997.
• "Arbitrating Patent Disputes," Managing Intellectual Property, March 1994.