John T. Whelan
John established Bayside Law in 2005 after ten years as Assistant Vice President and in-house patent counsel for Hughes Electronics Corporation (now DIRECTV) and Hughes Network Systems, Inc. As counsel for Hughes, John was responsible for establishing a home grown, world class patent portfolio primarily in the area of telecommunications, including 3G and 4G-LTE cellular technology, WiFi, DVB-S2, -T2, and -C2 error coding, V.44 data compression, and satellite system and advanced satellite acceleration technologies. John was also the executive in charge of licensing out these patents on behalf of Hughes.
John has extensive experience in evaluating and licensing standards essential patents (SEPs) and working with standards setting organizations, particularly ETSI, IEEE, and DVB. He represents SEP owners in the formation and management of patent pools, including pools formed around SEPs relating to the LTE, WiFi, and various DVB standards. In addition, John formed and administers a patent pool formed around the DVB-S2 standard. See www.S2Licensing.com for more details. He is recognized by the Licensing Executives Society as a Certified Licensing Professional.
In addition to patent licensing, John also focuses his practice on licensing technology and software, both in-bound and out-bound, and is skilled in the negotiation of indemnity, representation and warranty, intellectual property ownership, derivative works, escrow, termination, liquidated damages, and other intricate contractual provisions.
John’s experience as in-house patent and licensing counsel gives him a breadth and depth of real world corporate experience rarely found in private practitioners. John is uniquely qualified to assist companies and, in particular, in-house counsel with their patents, licensing, and transactional needs. John can provide counsel and focus to a company’s intellectual property program, as well as immediate assistance with substantive licensing and transactional matters.
After receiving his law degree in 1987, John was in private practice as a patent attorney in Washington, DC at the Finnegan Henderson and Fitzpatrick Cella law firms. While in law school, he worked as a radar systems engineer for Westinghouse Electric Corporation in Linthicum, Maryland. He received his law degree from The George Washington University National Law Center and his B.S. in Electrical Engineering from the University of Maryland. He is a past president of the Patent, Trademark, and Copyright Section of the Bar Association of the District of Columbia and worships at Trinity United Methodist Church in Prince Frederick, Maryland.
John is admitted to practice in Maryland, Virginia, Washington, D.C, and before the U.S. Patent and Trademark Office.