INTELLECTUAL PROPERTY LAW
practical . comprehensive- WHAT WE DO
From venture-backed startups to Fortune 100 companies,
we help businesses make the most of innovation.
Technology contracts . Intellectual property counseling
Corporate transactions . Outside IP general counsel services
Patent & Trademark Prosecution
TechnologyTechnology agreement drafting and negotiationlicensing . negotiation . audit
Business runs on software and data - whether for internal operations or providing products, services or licenses to end-users.
For nearly two decades we have assisted clients in buying, selling, developing, licensing and outsourcing a variety of software, hardware and related services across a broad spectrum of industries.For emerging software companies, we help build and maximize licensing and services revenue, whether through enterprise, mobile, consumer, SaaS or other business models.
For companies building out, maintaining or outsourcing IT infrastructure to better serve their customers, we draft and negotiate enterprise technology agreements. We have negotiated technology agreements with values ranging from tens of thousands to hundreds of millions of dollars.
Representative contracts have involved A/V capture hardware and software, EDI, fleet management, mobile applications, ERP systems, pipeline control systems, SCADA software, WMS, pipeline flow modeling software, electronic medical records systems, shipping inventory management software, co-location, e-commerce platforms, medical patient information management, scheduling software, finance/tax/accounting software, CRM software, commodities pricing software, remote desktop management, network security software, software escrow arrangements, telecommunications, utility smart grid, remote access software, UCaaS, A/V presentation systems software, time clock systems, equipment and personnel management software, POS systems, PDA application software, HR and payroll software, server installation and configuration, project management, content management, website development, emission calculation software, desktop support services, computer integration, technology outsourcing, data backup and data migration - just to name a few.
We also counsel clients regarding data security, privacy, software audit, website ADA compliance, domain name (ICANN), cloud, e-commerce and open source license issues.Intellectual Property CounselingIntellectual property portfolio development and commercialization
patents . trademarks . copyrights . trade secrets
Patent prosecution and monetization. We advise clients on patent procurement, strategy, licensing and enforcement, including patent landscape mapping, validity and clearance searches, and gap analysis. We obtain patent protection in the US and in key foreign markets for clients in a range of industries. Representative technologies include oilfield equipment, refinery safety equipment, aircraft systems, health and fitness, highway and agricultural machinery, petroleum refining processes, medical devices, hospital patient management, electronics, software systems, e-commerce, automotive parts, water purification, heavy equipment, financial services, food and beverage, broadcasting, content management, heavy construction, furniture, jewelry manufacturing, flood detection and mobility equipment.
Trademark prosecution and brand management. We advise clients in trademark prosecution worldwide and enforcement for start-ups and established companies, brand management, re-branding campaigns and conducting trademark clearance searches.
Copyright counseling. We advise clients in software development and licensing, user interfaces, DMCA issues, statutory royalties, data protection, website protection, advertising, written works and music.Trade secret protection. We counsel clients in protecting confidential business and technical information, and with respect to legally-protected data. Representative issues include protecting software code, addressing key employee departures, licensing petroleum product formulas, and enforcing non-disclosure agreements.
Corporate TransactionsDue diligence, deal negotiation and agreement drafting
intellectual property expertise for your deal team
M&A . commercial agreements . bankruptcy
Intellectual property often factors significantly into deal value. We advise businesses and investors in significant corporate transactions with respect to intellectual property issues.
Interesting representative matters include:
- Intellectual property licensing and manufacturing/distribution agreements across global and regional markets in automotive, medical device and other industries
- Negotiating licenses for fuel formula patents and trade secrets for a publicly traded petroleum refining company
- Acquisition of a European startup
- Establishing a commercial relationship, and debt and equity investments in a startup venture to provide in-vehicle television programming via satellite
- Investing in mobile business enterprise software company
- Acquiring from bankruptcy a patent portfolio drawn to content management technology
- Commercial supply agreement involving proprietary formulations and processes for manufacturer in food and beverage industry
- Recovering patents and patent applications, software and other intellectual property through foreclosure under security agreement after debtor company defaulted on note
- Development and implementation of automated meter reading technology for a utility company
- Acquiring a company engaged in developing and deploying broadcast media monitoring technology
- Licensing patent rights covering military equipment for a manufacturer for government agencies
- Investing in a startup focused on commercializing alternative fuel technology covered by a large, university-licensed patent portfolio
- Licensing intellectual property from a university for an emerging biotech company
IP General Counsel ServicesIP legal support for management and non-IP legal counsel
IP portfolio development . management . commercialization
We counsel clients through the lifecycle of an intellectual property portfolio.
For emerging companies, we work with founders to identify, protect and commercialize key innovation.
For more mature companies, whether public or private, we advise clients regarding portfolio growth, international strategy, licensing, enforcement and risk management.
Notable clients include a manufacturer in the heavy vehicle industry, publicly-traded petroleum refiner, medical device startups, medical software developers and a roller coaster company.
Patent EnforcementSubstantive patent enforcement strategy and counsel
patent licensing . patent litigation . patent opinions
We are not a litigation-focused firm. We have, however, quite a bit of experience with patent and other IP litigation and pre-litigation matters. We regularly write and lecture on current patent issues, and apply extensive patent knowledge in developing strategies and defenses in patent disputes. We have briefed and argued a variety of patent issues, including claim construction, infringement, validity, inventorship and ownership, and offer substantive patent expertise for litigators.
Representative matters include:
- Represented a consumer electronics company in patent litigation regarding wireless communication devices
- Represented a refining company in patent litigation concerning FCC technology
- Represented a engineering firm in litigation to enforce patent rights in infrastructure construction technology
- Represented a manufacturer in patent litigation over portable electronic devices for extreme sports enthusiasts
- Represented a distributor in litigation over copyright in fashion accessory designs
- Represented a client in $240 million patent litigation over tire maintenance technology
- Represented a manufacturer in litigation over inventorship and ownership of patented tire safety technology
- Represented a client in litigation over ownership of custom-developed animation software
- Represented a cement industry client in patent litigation over fly ash processing method
- Coordinated patent litigation in Europe
- WHO WE ARE
Derrick A. PizarroShareholder
Registered Patent Attorney
derrick.pizarro@pizarroallen.com
210-941-1274
Education:
Baylor University School of Law, JD, 2001
The University of Texas at San Antonio, BS, Mechanical Engineering, 1997
Admitted to Practice in:State of Texas
US Patent and Trademark Office
US District Court for the Northern, Southern, Western and Eastern Districts of Texas
US Court of Appeals for the Federal Circuit
US Court of Appeals for the Fifth Circuit
Professional Experience:
Shareholder
Cox Smith Matthews Incorporated
2008-2015
Associate
Cox Smith Matthews Incorporated
2001-2007
Court B. Allen
Shareholder
Registered Patent Attorney
210-634-4113
Education:
Baylor University School of Law, J.D., 1997
The University of Texas at Austin,
BS, Aerospace Engineering, 1989
Admitted to Practice in:
State of Texas
US Patent and Trademark Office
US District Court for the Northern and Western Districts of Texas
Professional Experience
Member
Dykema Cox Smith
2015-2017
Shareholder
Cox Smith Matthews Incorporated
2004-2015
Partner
Loeffler Jonas & Tuggey, LLP
2002-2004
Associate
Cox & Smith Incorporated
1997-2002
Michael L. Gostkowski, Ph.D.Patent Agentmichael.gostkowski@pizarroallen.com
Education:
State University of New York at Buffalo, BS, Chemistry, summa cum laude, 1996
The University of Texas at Austin, PhD, Chemistry, 2000
Admitted to Practice in:
US Patent and Trademark Office
- VISIBILITY
Books & Articles
09.01.23 "2023 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Derrick A. Pizarro, Practising Law Institute
10.01.22 "2022 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
09.01.21 "2021 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.01.21 “U.S. State Trademark and Unfair Competition Law – Texas Chapter,” by Derrick A. Pizarro, International Trademark Association (INTA), 2021
09.01.20 "2020 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.01.20 “U.S. State Trademark and Unfair Competition Law – Texas Chapter,” by Derrick A. Pizarro, International Trademark Association (INTA), 2020
09.01.19 "2019 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.01.19 “U.S. State Trademark and Unfair Competition Law – Texas Chapter,” by Gale R. "Pete" Peterson and Derrick A. Pizarro, International Trademark Association (INTA), 2019
09.01.18 "2018 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.01.18 “U.S. State Trademark and Unfair Competition Law – Texas Chapter,” by Gale R. "Pete" Peterson and Derrick A. Pizarro, International Trademark Association (INTA), 2018
09.01.17 "2017 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.01.17 “U.S. State Trademark and Unfair Competition Law – Texas Chapter,” by Gale R. "Pete" Peterson and Derrick A. Pizarro, International Trademark Association (INTA), 2017
09.01.16 "2016 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.01.16 “U.S. State Trademark and Unfair Competition Law – Texas Chapter,” by Gale R. "Pete" Peterson and Derrick A. Pizarro, International Trademark Association (INTA), 2016
09.01.15 "2015 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
09.01.15 “U.S. State Trademark and Unfair Competition Law – Texas Chapter,” by Gale R. "Pete" Peterson and Derrick A. Pizarro, International Trademark Association (INTA), 2015
05.29.15 "The Takedown Boomerang," by Derrick A. Pizarro, San Antonio North Chamber of Commerce, Technology News
09.01.14 "2014 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
04.01.14 “U.S. State Trademark and Unfair Competition Law – Texas Chapter,” by Derrick A. Pizarro, International Trademark Association (INTA), 2014
09.09.13 Hands Off!: Derrick A. Pizarro Explains New Law for Texas Businesses to Protect Their Trade Secrets, San Antonio Business Journal
09.01.13 "2013 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
09.01.12 "2012 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," by Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.01.11 "2011 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.23.10 "2010 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
09.25.09 "Get the most value by actively managing your firm's IP," by Derrick Pizarro, San Antonio Business Journal
07.30.09 "2009 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
06.16.08 "2008 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.24.07 "2007 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
08.25.06 "2006 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
09.01.05 "2005 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute09.01.04 "2004 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
09.01.03 "2003 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit," Gale R. "Pete" Peterson and Derrick A. Pizarro, Practising Law Institute
Speaking02.02.24 “Enterprise Technology Licensing,” Co-presenter Derrick Pizarro, 37th Annual Advanced Intellectual Property Law Course, State Bar of Texas
02.23.23 “2022-2023 Patent Law Updates,” Speaker Derrick Pizarro, 36th Annual Advanced Intellectual Property Law Course, State Bar of Texas
06.10.22 “2021-2022 Patent Law Updates,” Speaker Derrick Pizarro, Annual Meeting, State Bar of Texas
02.18.22 “2021-2022 Patent Law Updates,” Speaker Derrick Pizarro, 35th Annual Advanced Intellectual Property Law Course, State Bar of Texas
07.08.21 Advanced Intellectual Property Litigation, Course Director Derrick Pizarro, State Bar of Texas
05.15.20 “Patent Mid-Year Review,” Speaker Derrick Pizarro, AIPLA Spring Meeting
06.14.19 “2018-2019 Patent Law Update,” Speaker Derrick Pizarro, Annual Meeting, State Bar of Texas
06.14.19 Intellectual Property Law, Course Director Derrick Pizarro, Annual Meeting, State Bar of Texas
02.28.19 “Makers, Hackers and 3D Printing Risks,” Speaker Derrick Pizarro, 32d Annual Advanced Intellectual Property Law Course, State Bar of Texas, Dallas
06.22.18 “2017-2018 Patent Law Update,” Speaker Derrick Pizarro, Annual Meeting, State Bar of Texas
02.08.18 Advanced Intellectual Property Law, Course Director Derrick Pizarro, Intellectual Property Section, State Bar of Texas, Houston
06.23.17 “2016-2017 Patent Law Update,” Speaker Derrick Pizarro, Annual Meeting, State Bar of Texas
02.22.17 “Your First Conversation with a New Startup Client and Collaboration Issues,” Speaker Derrick Pizarro, 30th Annual Advanced Intellectual Property Law Workshop, State Bar of Texas, Austin
02.11.17 "Patents & IP: How to do it," Speaker Derrick Pizarro, UTSA CITE Technology Entrepreneurship Boot Camp, Spring 2017
01.12.17 “Intellectual Property 2.0: Top 10 Risks for Nonprofits,” Speaker Derrick Pizarro, 34th Annual Nonprofit Organizations Institute, Austin
10.15.16 "Patents & IP: How to do it," Speaker Derrick Pizarro, UTSA CITE Technology Entrepreneurship Boot Camp, Fall 2016
09.28.16 “Intellectual Property and How It Relates to Other Areas of Law”, Speaker
Derrick Pizarro, San Antonio LSA presentation
09.21.16 “Intellectual Property - What's the Big Idea?,” Speaker Derrick Pizarro, Client In-House CLE presentation06.17.16 “2015-2016 Patent Law Update,” Speaker Derrick Pizarro, Annual Meeting, State Bar of Texas
04.07.16 "Patent Trolls: Tools, Tactics and Timing," Speaker Derrick Pizarro, 42nd Annual Bankers Legal Conference, Texas Bankers Association, San Antonio
02.18.16 Course Moderator Derrick Pizarro, 29th Annual Advanced Intellectual Property Law Course, State Bar of Texas, San Antonio
02.17.16 “Managing the Software Licensing Process,” Panel Moderator Derrick Pizarro, Intellectual Property Law Workshop: Advising on Corporate IP Policies, 29th Annual Advanced Intellectual Property Law Course, State Bar of Texas, San Antonio
01.14.16 “The Innovative Nonprofit (That's You!),” Speaker Derrick Pizarro, 33rd Annual Nonprofit Organizations Institute, Austin
06.27.2015 “IP Law – Why We Do What We Do,” Speaker Derrick Pizarro, SA LSA Presentation
06.19.15 “2014-2015 Patent Law Update,” Speaker Derrick Pizarro, Annual Meeting, State Bar of Texas
10.23.14 "Basic Intellectual Property Strategy," Speaker Derrick A. Pizarro, El Paso Business Conference & Expo, El Paso, Texas
10.23.14 "Intellectual Property Law for Startups," Speaker Derrick A. Pizarro, The Hub of Human Innovation, El Paso, Texas
09.30.14 DuPont 2014 Intellectual Property CLE Seminar, Speaker Derrick Pizarro, DuPont & Widener School of Law Wilmington, Delaware
06.17.14 Benefits and Risks of Cloud Computing, Panel Member Derrick Pizarro, Nonprofit Technology Summit hosted by the San Antonio Area Foundation and the International Association of Microsoft Channel Partners
03.20.14 "2013-2014 Patent Law Update," Speaker Derrick Pizarro, 27th Annual Advanced Intellectual Property Law Course, State Bar of Texas
02.25.14 “2013-2014 Patent Law Update,” Speaker Derrick Pizarro, Austin IP Law Association
10.03.13 "Patent Law Updates," Speaker Derrick Pizarro, 2013 Texas Advanced Paralegal Seminar (TAPS)
06.06.13 Application Developer’s Alliance’s “Patent Summit,” Speaker Derrick Pizarro, The Capital Factory, Austin
03.28.13 “Intellectual Property Law for Startups,” Speaker Derrick Pizarro, The Hub of Human Innovation, El Paso
02.19.13 "2012 - 2013 Patent Law Update," Speaker Derrick Pizarro, Austin IP Law Association
02.14.13 "2012 - 2013 Patent Law Update," Speaker Derrick Pizarro, 26th Annual Advanced Intellectual Property Law Course, State Bar of Texas
06.28.12 “Intellectual Property Law for Startups,” Speaker Derrick Pizarro, The Hub of Human Innovation, El Paso10.01.07 "Data Retention" Panel Discussion, San Antonio North Chamber of Commerce CIO Breakfast Series, Organizer and Moderator Derrick Pizarro
08.01.06 "Data Security Breach Notification: No Sweeping Bad News Under a Rug", Speaker Derrick Pizarro,Texas State Bar, Paralegal Division
Recognition
Selected for inclusion as a "Texas Rising Star," Super Lawyers
- INVOLVEMENT
State Bar of Texas, Intellectual Property Law Section
Derrick Pizarro, Chair, 2019-2020
Chair-Elect, 2018-2019
Vice-Chair, 2017-2018
Treasurer, 2015-2017
Council Member, 2013-2015
Chair, Trade Secrets and Unfair Competition Committee, 2011-2013American Intellectual Property Law Association (AIPLA)
International Trademark Association (INTA)
North San Antonio Chamber of Commerce
Board of Directors, Past Member
Leadership Lab AlumnusSan Antonio Bar Association
San Antonio Bar Association Community Justice Program, Participant
University of Texas at San Antonio
CITE $100K Student Technology Venture Competition, Judge
Department of Mechanical Engineering and Biomechanics, Advisory Board
Guest lecturer in undergraduate and graduate engineering and business program - CONNECT
Disclaimer:
Communicating with Pizarro Allen PC will not establish an attorney client relationship with us.
Please keep in mind that Pizarro Allen PC does not represent you without a signed engagement letter.
Until we confirm that we will represent you, please do not send Pizarro Allen PC any confidential or time-sensitive information.
270 N. Loop 1604 E., Suite 300 | San Antonio, Texas 78232
by appointment only
Phone210.941.1277
