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Jennifer Bailey

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Jennifer Bailey

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Jennifer Bailey leads Erise’s patent prosecution group, where she obtains business solutions for her clients that balance risk, budget, goals, and short and long-term benefits. Jennifer enjoys problem-solving for her clients and is energized by their success and making their business lives easier. Her 20-plus-year track record of achieving meaningful business results for clients is demonstrated by her long relationships with many of her clients.

Jennifer has significant experience and success obtaining outcomes for petitioners and patent owners in post-grant proceedings. She was lead counsel for Petitioner on the first-filed inter partes review (IPR) and was recently named one of the Top 25 Best Performing IPR Attorneys for Petitioners at the Patent Trial and Appeal Board (PTAB) by Patexia.

Jennifer believes in obtaining quality patents over quantity. Her business and technical knowledge combined with her patent prosecution and litigation experience allow her and Erise’s patent counseling team to prepare patents that withstand litigation, IPRs, and other post-grant challenges.

She regularly assists clients in complex pre-litigation IP matters, including negotiating joint development agreements, software development and licensing agreements, and patent license agreements.

Jennifer’s management philosophy is that the team is enhanced by diversity of thought, diversity of people, and diversity of work. As group leader, she strives to balance her team’s workload while keeping them challenged with interesting and varied projects and technologies. The team is trained to formulate solutions, think ahead, and be proactive to the client’s needs. The entire team understands that we are ultimately service providers to our clients, and we work to provide excellent service with efficiency, quality, and collaboration.

She has been named an “IP Star” by Managing IP since 2013 and selected to the IAM Strategy 300 Global Leaders for 2023-2024. She 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 held a number of leadership positions with the Association of Intellectual Property Firms, including president of the organization from 2012 to 2014.

Patent Prosecution Highlights

Jennifer and her team manage patent portfolios for major corporations and technology leaders, including:

  • One of the country’s biggest manufacturers of large equipment.
  • One of the leading U.S. tax preparation companies.
  • Multiple companies that do work for the federal government, including a contractor for non-nuclear components for the nation’s nuclear stockpile.
  • One of the world’s largest sports gaming platforms.

IPR Highlights

  • Went three-for-three at the PTAB on behalf of a global technology leader accused of patent infringement related to smart card technology. Jennifer and Erise petitioned for IPR on the three relevant patents and prevailed on all three.
  • On behalf of the Patent Owner, a global media data and analytics provider, obtained a denial of institution for two IPRs.
THOUGHT LEADERSHIP
  • 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.
EDUCATION
  • J.D., University of Missouri-Columbia
  • Concentration in Physics, University of Missouri-Columbia
  • B.S., Mathematics, University of Tennessee at Martin
LICENSES
  • Kansas
  • Missouri
  • Tennessee (Inactive)
  • 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
MEMBERSHIPS
  • Association of Intellectual Property Firms
    • President, 2012-2014
    • Secretary, 2011-2012
HONORS
  • IAM Strategy 300 Global Leaders, 2024
  • IAM Strategy 300, The World’s Leading IP Strategists, 2023
  • IAM Patent 1000, The World’s Leading Patent Professionals, 2023 to 2024
  • IP Stars, Managing IP, 2013 to 2024
  • Leading Lawyer, Chambers USA, 2024
  • Patexia: Top 25 Best Performing IPR Attorneys for Petitioners, 2023
  • Patexia: Top 50 Most Active IPR Attorneys for Petitioners, 2023
  • Top 50 Women in PTAB Trials, PTAB Bar Association, 2019 & 2022
  • Missouri & Kansas Super Lawyers, 2019-2023
    • Rising Star, 2010-2016
THOUGHT LEADERSHIP
  • 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.
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