Peter J. Davis

Peter J. Davis

PARTNER
pdavis@wtplaw.com
BALTIMORE
T: 410.347.8738
F: 410.223.4304



Mr. Davis began his career as a patent examiner at the U.S. Patent and Trademark Office (“USPTO”).  Following his time at the USPTO, he spent 20 years at two very large international law firms managing the patent portfolios of several Fortune 500 companies, as well as doing patent, trademark and copyright infringement cases in federal district courts across the U.S.  Mr. Davis has a technical background in physics, mechanical engineering and biochemistry, and he has written and prosecuted patent applications and litigated patent infringement cases across a wide range of technologies, including biotechnology, pharmaceuticals, materials science, industrial chemicals, medical devices, heavy machinery, network hardware, software, cyber solutions and household devices and appliances.  He counsels his clients on patentability, patent infringement and validity, and he has assisted both licensors and licensees in the negotiation of complex patent license agreements, research and development agreements and supply and manufacturing agreements.  With his background as a USPTO patent examiner, together with broad and deep experience in both patent litigation and patent prosecution, Mr. Davis specializes in providing practical and cost-effective strategic advice to clients for whom intellectual property is a critical part of their business model.

recognitions

  • Listed in Best Lawyers in America, 2020


Memberships & Activities

  • Member: Maryland State Bar Association
  • Board of Directors: The Summit School
  • Best Lawyers Designation

Intellectual Property Litigation

  • Prosecute and defend clients in patent infringement litigations in U.S. courts across a broad range of technologies, including agribusiness, biotechnology, pharmaceuticals, industrial chemicals, medical devices, heavy machinery, software, and household devices and appliances
  • Coordinate U.S. and international patent enforcement activities for clients with IP assets abroad
  • Conduct and manage intellectual property litigations, including plaintiff pre-filing investigations and defendant defense investigations; develop case strategy, including discovery, pre-trial and trial strategies; prepare and manage litigation budgets; manage litigation teams; work with joint defense groups
  • Advise clients on costs and benefits of intellectual property enforcement litigation in U.S. and international courts
  • Prosecute and defend clients in trademark and trade dress enforcement litigations in U.S. courts
  • Prosecute and defend clients in copyright litigations in U.S. courts
  • Prosecute and defend clients in trade secret litigations in state and U.S. courts
 

Patents

  • Former patent examiner at U.S. Patent and Trademark Office
  • Prepare, file and prosecution patent applications across a broad range of technologies
  • Manage U.S. and international patent prosecution portfolios for sole inventors, as well as small, medium and large companies
  • Work with inventors and companies to devise cost-effective strategies for filing patent applications and quickly obtaining patent protection
  • Negotiate with patent examiners; pursue patent appeals to Board of Patent Appeals and Interferences
  • File and prosecute reissue patent applications; reexaminations
  • Advise clients on patentability, patent infringement, freedom to operate issues
  • Advise and discuss with clients relative benefits and costs of patent protection
  • Develop patent portfolio strategies for new and developing companies
  • Develop proprietary patent landscape product and service
  • Work with clients on developing patent policing, enforcement, and monetization strategies
  • Advise on and assist with the development of patent department and patent procedures
  • Provoke patent interferences; conduct and manage patent interferences through the priority phase to final judgment and including Section 146 actions
  • Prosecute and defend patent infringement litigations in federal courts
 

International Intellectual Property

  • Manage international patent and trademark portfolios for companies of all sizes
  • Work with clients to develop and execute cost-effective and business targeted international protection strategies
  • Coordinate intellectual property enforcement actions across multiple jurisdictions for clients having worldwide IP portfolios
 

Intellectual Property & Technology

  • Advise clients on and provide services to clients in connection with all aspects of their businesses that relate to technology and intellectual property
  • Advise on and assist clients with development of IP strategy, including technology monetization, enforcement, licensing, and litigation strategies
 

Transactional Intellectual Property

  • Negotiate and draft transaction agreements primarily relating to or including intellectual property issues, including but not limited to employment agreements, supply agreements, joint development agreements, purchase agreements, confidentiality/non-disclosure agreements, joint venture agreements, termination agreements/letters, cease and desist letters, and settlement agreements
  • Conduct/manage IP due diligence for corporate transactions
 

Copyrights

  • Advise clients on copyrightability and copyright enforcement
  • Prepare and file copyright applications
  • Prosecute and defend copyright litigations in federal courts
 

Internet and E-Commerce

  • Advise clients on intellectual property issues arising from internet usage and e-commerce
  • Prosecution and defend clients in federal court litigation relating to claims arising out of internet usage and e-commerce
  • Prepare and file patent applications, trademark applications and copyright applications to protect client innovations, trade names and works of authorship relating to internet and e-commerce technology and businesses
 

Licensing & Technology Transfer

  • Advise on and assist clients with development of IP strategy, including technology monetization, enforcement, licensing, and litigation strategies
  • Negotiate and draft licensing and technology transfer agreements between private commercial, non-profit, university, and government entities
  • Conduct/manage due diligence for licensing and technology transfer transactions
 

Open Source, SaaS & Other Innovative Distribution Models

  • Advise clients on intellectual property issues relating to use or distribution of Open Source, Software As A Service, and other software distribution models
 

Technology Start-ups

  • Advise technology startups on cost-effective strategies for building, documenting and protecting critical intellectual property
  • Develop collaborative programs for reducing patent and prosecution costs for technology start-ups
  • Work with incubators and VC firms to advise technology start-ups to assess patentability and freedom to operate for new technologies
 

Trade Dress

  • Advise clients on protectable elements, policing and enforcing of Trade Dress
  • Prosecute and defend Trade Dress litigation in federal courts
 

Trade Secrets

  • Advise clients on elements and relative benefits of protecting innovation and information through Trade Secret
  • Advise clients concerning protecting and policing Trade Secrets, both in context of employer/employee relations and between competitors
  • Prosecute and defend Trade Secret litigation in federal courts
 

Trademarks, Domain Names and Other Brand Protection

  • Advise clients on requirements and benefits of Trademark protection
  • Advise clients on policing and enforcement strategies for maintaining Trademark protection
  • File and prosecution Trademark applications before the U.S. Patent and Trademark Office
  • Prosecute and defend Trademark litigation in federal courts
 

Computer Software & Hardware

  • Advise clients on protectable elements of software and hardware, including relative benefits of patent, copyright, and trade secret protection
  • Prepare and file patent application for client software and hardware inventions
  • Prepare and file copyright applications for client software works of authorship
 

Life Sciences

  • Advise life sciences inventors and companies concerning patentability of life science-related inventions and innovations
  • Develop patent portfolio-building strategies with new and developing life sciences companies
  • Work with life science clients to devise cost-effective strategies for filing for and quickly obtaining patent protection on life science-related inventions
  • Advise life science companies on relative benefits, costs, and risks of protecting life science innovations with patent protection versus trade secret protection
  • Advise life science companies on patent infringement, patent validity, and freedom-to-operate issues
  • Advise life science companies on patent landscapes for selected life science technologies
 

Cyber Security and Information Privacy

  • Advise software and network security companies concerning patentability of their inventions and innovations
  • Develop patent portfolio-building strategies for cyber/network security companies
  • Work with clients to devise cost-effective strategies for filing for and quickly obtaining patent protection on cyber/network security inventions
  • Advise cyber/network security companies on relative benefits, costs, and risks of protecting innovations with patent protection versus trade secret protection
  • Advise cyber/network security companies on patent infringement, patent validity, and freedom-to-operate issues
  • Advise companies on patent landscapes in cyber/network security technologies
 

Clean Energy Technology

  • Advise clean energy companies concerning patentability of their inventions and innovations
  • Develop patent portfolio-building strategies for clean energy companies
  • Work with clients to devise cost-effective strategies for filing for and quickly obtaining patent protection on clean energy inventions
  • Advise clean energy companies on relative benefits, costs, and risks of protecting innovations with patent protection versus trade secret protection
  • Advise clean energy companies on patent infringement, patent validity, and freedom-to-operate issues
  • Advise companies on patent landscapes in clean energy technologies
 

Technologies/Industries

  • Biotechnology, pharmaceuticals, medical devices
  • Materials science, chemistry
  • Electronics, microlithography, optics
  • Heavy and light machinery; mechanical devices
  • Software, internet, network security, business methods
  • Household and personal products
PRESENTATIONS & PUBLICATIONS

Co-Author: 4th Circuit Decisions in Intellectual Property, Annual Review of Developments in Business and Corporate Litigation, Committee on Business and Corporate Litigation of the ABA; 2007, 2008, 2009 Editions

Instructor: 2012 Patent and Intellectual Property Law and Practice Summer Institute, Center for Advanced Study and Research on Intellectual Property, July 30-31, 2012

Presenter and Lecturer: Intensive Course in Pharmaceutical and Biotech Patent Opinion Writing, American Conference Institute, Cambridge, MA; Atlanta, GA, 2008

Guest Lecturer: University of Virginia Darden School of Business E-Boot Camp, Charlottesville, VA, 2008, 2009, 2010

Guest Lecturer: Center for Advanced Study & Research on Intellectual Property, Patent and Intellectual Property Law and Practice Summer Institute, 2009, 2010

ARTICLES

Defend Trade Secrets Act (DTSA) Signed into Law, May 11, 2016

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act (DTSA) creating a cause of action under federal law for trade secret misappropriation which previously had been governed by state common law and each state’s adoption of the Uniform Trade Secrets Act.   The law took effect immediately upon signing.

Senate Passes House Patent Reform Bill (H.R. 1249) -- What You Need to Know

On September 8, 2011, the U.S. Senate passed the House version of the Leahy Smith America Invents Act (H.R. 1249) by margin of 89 to 9.  The President will sign the bill into law within the next 10 days.  The Leahy Smith America Invents Act is the result of more than ten years of attempts at patent reform and represents the most sweeping change of U.S. Patent laws in over 50 years.  The law makes significant changes to a number of areas of the patent law, and brings the U.S.


NEWS

Significant Win for Agrochemical Client

Steve Tiller, Barry Neuman and Peter Davis have obtained a significant victory for our client Willowood, LLC, a generic crop protection company, that will have nationwide reverberations in the agrochemical industry.  In an April 10 ruling, a federal district court  in Greensboro, NC held that copyright laws do not apply to labels that accompany federally-approved pesticide products.


Whiteford, Taylor & Preston and Six Partners Named as "IP Stars" by Managing Intellectual Property

Whiteford, Taylor & Preston is pleased to announce that Managing Intellectual Property has given the firm’s Maryland Intellectual Property practice its highest rating and has singled out six partners for individual recognition in Maryland. 

In their commentary, the editors noted that the firm is “highly respected” and that the IP lawyers in the group “handle a split of contentious and non-contentious matters crossing over patent trademark and copyright matters.”


Peter J. Davis Joins Whiteford Taylor & Preston

Whiteford, Taylor & Preston is delighted to announce that Peter J. Davis has joined the firm's Technology & Intellectual Property group as a partner.

The firm's managing partner, Martin T. Fletcher, said, "We are excited to welcome Peter to the firm. He has an international patent litigation, prosecution and interference practice that is a great fit with our existing practice.