Jennifer Bailey leads Erise’s patent prosecution group and focuses her practice in post-grant review of patents and patent prosecution in the electrical, computer software, and electromechanical arts. She works closely with her clients to understand their technology, their competitors, and the marketplace’s demands. Combining this information with her keen business sense, Jennifer assists clients in building patent portfolios that add value to a company both in the short and long term. She adeptly navigates her clients’ patent applications through the U.S. and foreign patent offices to obtain the best possible scope of protection while still limiting examination expense.
Jennifer has extensive experience in DSP, SaaS, encryption and authentication, optics, digital surveillance, financial services and payment systems, medical devices, aerial devices, and GPS devices. Jennifer regularly drafts and negotiates software development agreements, software licensing agreements, and patent license agreements. Jennifer’s team provides various opinion work, including large-scale patent landscape analyses and invalidity and non-infringement opinions.
Jennifer has significant experience conducting post-grant proceedings in the U.S. and Europe. She was lead counsel on the first-filed inter partes review (IPR) and regularly serves as lead counsel on IPRs/PGRs representing both petitioners and patent owners. Jennifer’s success rate in IPRs is extremely high due to her deep knowledge of patent law, technical proficiency, and experience both as a patent prosecutor and former litigator.
Jennifer has been named an IP Star by Managing IP since 2013 and was selected to the inaugural class of the Top 50 Women in PTAB Trials by the PTAB Bar Association in 2019. A frequent speaker and author, Jennifer is looked to as an intellectual property thought leader. She has taught as an adjunct professor of patent law at the University of Missouri-Kansas City School of Law and as a mathematics instructor at the University of Missouri-Columbia. She has held a number of leadership positions with the Association of Intellectual Property Firms, including president of the organization from 2012 to 2014.
- 2001, J.D., University of Missouri-Columbia
- 2002, Concentration in Physics, University of Missouri-Columbia
- 1998, B.S., Mathematics, University of Tennessee at Martin
- U.S. District Court for the Western District of Missouri
- U.S. District Court for the District of Kansas
- U.S. Court of Appeals for the Federal Circuit
- U.S. Patent and Trademark Office
- IP Stars, Managing IP, 2013-2020
- Top 50 Women in PTAB Trials, PTAB Bar Association, 2019
- Missouri & Kansas Super Lawyers, 2019
- Rising Star, 2010-2016
- University of Missouri – Kansas City School of Law, Adjunct Professor, Patent Law
- Author, “Big Data Issues Are Not Just for Big Companies,” Ingram’s, November 2019.
- Panelist, “Winning at §112: The Language of Patents,” LexisNexis IP, July 25, 2019.
- Panelist, “Functional Claiming,” Tennessee IP Law Association Spring Meeting, Nashville, TN, May 4, 2018.
- Panelist, “Big Data Analytics,” 3rd Pan-American Licensing Executive Society YMC Conference, Los Angeles, CA, June 16, 2017.
- Panelist, “Top 5 Techniques for Software Patent Applications Post-Alice,” IP Watchdog and Innography Webinar, December 10, 2015.
- Speaker, “Maximizing Return on Investment: Prioritizing Legal Expenditures While Ensuring Ownership and Compliance of Your Company’s Intellectual Property,” BKD’s 14th Annual CFO Seminar, Kansas City, MO, October 29, 2015.
- Speaker, “IP Provisions for Business Contracts that Every Non-IP Attorney Should Know,” Two-Part Webinar Series, Kansas Bar Association, January 28-29, 2015.
- Panelist, “Strategic Considerations Before Kick-Starting an IPR,” American Bar Association’s Center for Professional Development, Section of IP Law, December 16, 2014.
- Speaker, “AIA Post-Grant Patent Practice Conference,” International Intellectual Property Institute, Arlington, VA, February 19-20, 2014.
- Speaker, “Conducting Inter Partes Reviews Under the New Rules: Reflections on Inter Partes Review No. 1,” Lawyers Association of Kansas City, January 22, 2014.
- Speaker, “IPR Proceedings at the USPTO—Strategic Approaches to the New Patent Proceedings,” Law Seminars International Telebriefing, November 12, 2013.
- Author, “New Approaches in Navigating Patent Law: Lessons Learned from the First Year of Inter Partes Reviews,” originally published in Landslide, a Publication of the American Bar Association’s Section of Intellectual Property Law, November/December 2013.
- Speaker, “Drafting Software Development Agreements,” Association of Intellectual Property Firms’ Annual Meeting, Washington, D.C., October 1, 2013.
- Speaker, “Fighting It Out in the Patent Office; Early Experiences and Observations About IPRs,” Boston Patent Law Association, Boston, MA, June 19, 2013.
- Speaker, “Best Practices for Preparing and Responding to Requests for Reexamination,” Lawyer’s Association of Kansas City, December 3, 2010.
- Speaker, “Negotiating & Drafting License Agreements in Anticipation of Patent Validity Challenges,” Kansas City Metropolitan Bar Association, Kansas City, MO, October 27, 2009.
- Panelist, “Recent Patent Law Developments for Business Lawyers,” American Bar Association’s Annual Meeting, Chicago, IL, August 2, 2009.
- Association of Intellectual Property Firms
- President, 2012-2014
- Secretary, 2011-2012