ATTORNEYS

Frank X. Curci

Partner

Frank X. Curci is an intellectual property, technology and business transactions attorney.  His practice focuses on the representation of high-tech companies (ranging from emerging growth companies to global companies), bioscience industry companies, universities/research institutions, global technology consortia, technology accelerators, and other technology-based companies.

He counsels these clients concerning a range of technology, intellectual property and business matters, including patent/technology licensing, technology collaborations & consortia (including technology standards), research matters, technology transfer, the overall protection, commercialization, and use of the client’s intellectual property rights.

Frank has a recognized bioscience practice representing universities/research institutions and bioscience companies regarding licensing, technology transfer, collaborations, research, and other technology commercialization matters.  Click here to read more.

He has earned a national reputation in the high tech industry for his work regarding the formation, structuring, and ongoing operations of global technology consortia and other technology collaborations (including standards organizations). Click here to read more.

Frank is active with high technology and bioscience-related associations. For several years he has been an Adjunct Professor of Law teaching intellectual property law courses at Oregon, Arizona and California law schools.

He has received The Best Lawyers in America® (2009-2019) recognition in the Technology Law and Biotechnology Law fields. In 2017 and 2018 Frank was named to the Oregon Super Lawyers list.  He also has an AV Rating® from Martindale-Hubbell®.

Professional Experience

  • Ater Wynne LLP, Portland, Oregon, Partner, 2012 to present
  • Attorney in Portland, Oregon law firms from 1988 to 2005 and 2010 to present; including Preston Gates & Ellis (now KL Gates), 1999 to 2005 (Partner, 2001 to 2005), Lead the Portland Office Intellectual Property Practice
  • Jennings Strouss & Salmon, Phoenix, AZ, Shareholder, 2005 to 2010, Lead Intellectual Property Practice, 2008 to 2010
  • Cullen & Dykman, New York City, Associate, 1984 to 1987

Education

  • Fordham University School of Law (New York City), J.D., 1984
  • Manhattan College (New York City), B.A. Summa Cum Laude, Phi Beta Kappa, 1981

Admitted to Practice

  • Oregon
  • New York
  • Arizona
  • Washington

Professional Activities

  • Cancer Research & Biostatistics Institute, Member, Board of Directors (Seattle, 2012 to present)
  • OTRADI/OBI Incubator, Member, Board of Directors (Portland, 2016 to present)
  • Technology Standards Series, Co-founder (Portland, 2016 – Present)
  • Pacific Northwest Life Sciences Executive Forum, Co-organizer (Seattle, 2013 to present)
  • Arizona BioIndustry Association, Member, Board of Directors (Phoenix, 2009 and 2010)
  • Adjunct Professor of Law, 1996 to present
  • Lewis & Clark Law School, “Licensing & Technology Transfer” course (2011 to present & 2004 to 2005)
  • Sandra Day O’Connor School of Law, “High Technology Licensing” course (2006 to 2010)
  • McGeorge School of Law, Univ. of the Pacific, “International IP Law” course (1996 to 2003).

Representative Presentations

  • Speaker, “The Role of Universities in Standards-Setting Organizations and Other Technology Consortia”, University of California- Santa Cruz event (Santa Cruz, CA Sept 2018)
  • Speaker, “Key Issues to Consider When Sharing Data,” 2018 Annual Association of University Technology Managers (AUTM) Convention (Phoenix, AZ February 2018); OHSU Data conference (Portland, OR Nov, 2017)
  • Speaker, “Key Provisions To Address Upon Termination of a License Agreement”, 2018 Annual Association of University Technology Managers (AUTM) Convention (Phoenix, AZ February 2018)
  • Speaker, “Technology Licensing: Strategic Issues Every Licensor and Licensee Should Consider”, Portland State University Accelerator/OTRADI event (Portland, OR, Feb 2018)
  • Speaker, “IP Strategies to Maximize the Value of Your Technology-Based Company”, RAIN Accelerator (Eugene, OR, June 2017); Portland State University Accelerator/OTRADI event (Portland, OR, Feb 2017); OHSU MedTech Alliance event (Portland, OR, 2014); Oregon Bioscience Association’s Annual Conference (Portland, OR, 2012)
  • Co-Speaker, “Spotlight on Clinical Trial Sponsorship,” Society of Research Administrators International’s 2016 Annual Western/Midwest Regional Conference (Portland, OR, May 2016)
  • Speaker, “Bioscience Collaborations,” MIT Enterprise Forum Northwest event (Seattle, WA 2015); Pacific Northwest Life Sciences Executive Forum (Seattle, WA, 2014); Licensing Executives Society (LES)–Seattle Chapter (Seattle, WA, Dec. 2010); Licensing Executives Society (LES)–Portland Chapter (Portland, OR, Nov. 2010); Society of Research Administrators International, 2010 Annual Western Regional Conference (Tucson, AZ, June 2010);Oregon Bioscience Association Annual Conference (May 2009); and Arizona BioIndustry Association Annual Conference (April 2009)
  • Speaker, “Patent Licensing,” University of Washington Law School’s CASRIP Program (Seattle, WA, July 2012); Oregon Law Institute (June 2012)
  • Speaker and Moderator, “Establishing and Managing Cross-Institutional Research Collaborations,” Society of Research Administrators International, 2011 Annual Conference (Montreal, Canada, October 2011)
  • Co-Speaker, “Technology Licensing,” Practising Law Institute webinar (October 2011)
  • Co-Speaker, “Bioscience Partnering: Pathways to Products and Profits,” Licensing Executives Society (LES) National Spring Meeting (New York City, May, 2011)
  • Co-Moderator/Co-Organizer, “Technology Standards Roundtable” Conferences, Sandra Day O’Connor School of Law, Arizona State University, Tempe, AZ; (January 2010 and April 2011)
  • Co-Speaker, “What’s a Reasonable Royalty Rate? Patent and Technology Licensing & Research,” American Association of Law Libraries Annual Convention (Denver, CO, July 2010)
  • Speaker, Moderator and Co-Organizer, “Commercializing Arizona Life Sciences Forum” conferences; 2nd, 3rd, 4th, 5th and 6th Annual Conferences (April 2006; Oct 2007; Oct 2008; Sept 2009; and March 2010; all in Phoenix, AZ area)
  • Speaker, “Standards Setting & Other Multi-Party Collaborative Technology Consortia,” Law Seminars International seminar(Seattle, WA, Aug 2008; and Phoenix, AZ, March 2008)
  • Speaker, “Risks Associated with Using Open Source Software & Need for Internal Open Source Compliance Programs,” Law Seminars International seminar (Phoenix, AZ, March 2008)

Representative Matters

  • High Technology & General Intellectual Property Matters
  • Counsel clients regarding development, protection, commercialization, and other strategic uses of technology/IP rights, including: (i) patent/technology licensing; (ii) technology collaborations; (iii) technology distribution arrangements (including resellers/OEMs); (iv) open source software issues; (v) e-commerce/internet-based businesses; (vi) trademark use and protection; and (vii) additional technology acquisition and transfer matters.
  • Represent leading high tech companies, and serve as main outside counsel to global technology consortia entities, regarding the formation, structuring, and ongoing operations of global technology consortia, including technology standards organizations.
  • Counsel technology accelerator/incubator entities regarding technology commercialization matters and investments in early stage companies.
  • Bioscience Industry Matters
  • Represent several bioscience research institutions concerning patent/technology licensing, collaborations, other technology commercialization matters, IP policy matters, clinical trial agreements, and the formation of spin out companies.
  • Represent emerging growth medical device and other bioscience companies concerning patent/technology licensing, collaborations, and other intellectual property matters.
  • International Business Matters
  • Earlier in his career was a “Visiting Attorney” at the Tokyo, Japan law firm of Matsuo & Kosugi counseling mostly Japanese corporations in international licensing and other business transactions. Frank’s practice has had an international component since that time.
  • Additional Commercial and Business Matters
  • Represents clients in numerous commercial and corporate transactions, including acquisitions, creation of spin outs, creation of technology accelerators, equity and debt investments in startups, and other business transactions described above.

Representative Publications