Jonathan H. Spadt

Jonathan is a co-chair of the firm’s intellectual property section. He previously spent 26 years with a successful IP boutique, including the last 12 years as its CEO.  In 2024 his firm joined Buchanan Ingersoll & Rooney. 

Jonathan’s practice focuses on the development and management of international commercialization plans and the comprehensive strategies that support those plans, including IP procurement, enforcement, and integration into business planning. With a particular focus on transatlantic innovation trade, he has significant experience in dealing with the differences between the U.S. and European legal frameworks. This experience supports his active role in policy discussions relevant to improving IP laws with the objective of lowering trade barriers between jurisdictions having mutual interests in fostering improved development and commercialization of innovation. In addition, he has specific experience in business management and risk-avoidance, as well as concomitant licensing and transactions.

In addition to his active leadership of the IP section, Jonathan is committed to supporting organizations that promote healthy international innovation and trade. He is a Board member of the German-American Business Council, and a Vice-Chair of the Global Series Committee of the Federal Circuit Bar Association.

He routinely writes and lectures throughout the United States and Europe in both the private and public sectors and actively participates in policy discussions relevant to transatlantic trade and IP law.

After graduating with his B.S. in Chemical Engineering, With Distinction, from Penn State University, he worked as an engineer for Merck & Co., Inc. This was a natural career path after receiving, in 1991, the Merck-Penn State Academic Fellowship Award. In 2015, Jonathan was honored with the Outstanding Engineering Alumnus Award from the Pennsylvania State University College of Engineering.

How Jonathan Helps Clients

Jonathan’s counseling philosophy is centered on his belief that IP must be integrated with all other legal areas of a client’s business.  IP is not a stand-alone practice.  Today, IP must be embedded as a cornerstone of a broader and more comprehensive structure that exists to achieve the commercial goals of an enterprise.  A company’s IP strategy must align with, and support, all other activities.  International trade considerations, including geopolitical realities, impact market access objectives (distribution and supply side), and these necessarily implicate where a company’s IP needs to be and can be enforced/licensed.  Labor and employment laws impact access to talent and skilled labor which also informs the location of R&D and manufacturing, all of which need to be considered in line with IP, including trade secret protection and data movement and security.   Regulatory compliance can impact, and inform, IP strategies.  Tax laws impact jurisdictional choices and royalty flows.  Even a client’s government relations and public policy positions should incorporate IP considerations, as unintended consequences of legislative and policy changes in other areas can impact IP assets.  Having a complete understanding of these and other interactions with IP gives a client the highest return on IP investment. 

I am passionate about what we accomplish with our clients because together we improve the world.

Patent Expertise

Jonathan has been working with clients to manage strategically important patent portfolios  for over 25 years, and currently oversees the portfolio development for several major global companies in markets  including automotive,  medical devices, medicine,and chemicals. With years of experience in developing deliberate and purposeful patent strategies, he has successfully seen the impact of smart prosecution on a client’s IP position. Many of his plans have resulted in licensing revenue and strategically important plaintiff positions.

Within our ever-more competitive world, it is more important than ever to consider foreign patents laws, policy trends, enforcement options and effective claim coverage. Identifying not only competitors, but their activities and the geographical locations of those activities, is critical to making cost-effective, impactful decisions.  

Intellectual Property Strategy & Risk Management

Jonathan understands that the intersection of IP law, business and technology defines the world in which the firm’s clients operate and succeed. No part of IP law exists in a vacuum and it is with that principle in mind that he advises clients and supports their practical, decision-making processes and leads them toward consequential business solutions and preferred outcomes.

Jonathan understands the importance of a realistic understanding of an adverse party’s IP position and how that position might impact the desires of a client. Features of this work include providing trial testimony on written opinions which has led to successful outcomes and the strategic use of tools to minimize litigation exposure, such as post-grant PTO proceedings. This practical approach has been honed over the years because he takes the time to understand the client’s competitors, the markets in which the client operates, the goals of the client and the impact of decisions made by the client on the successful achievement of those goals. Many of his opinions have later been tested, including at trial through his own testimony and have withstood the test of time and a changing global marketplace with concomitant changes in applicable law.

Technology Transactions

Jonathan routinely advises clients on the issues informing licensing decisions, technology development deals and due diligence efforts by companies bringing technology in, either by acquisition of companies or simply straight IP purchases. One particular expertise is helping clients to structure deals with adequate up-front incentives for development while maintaining control and minimizing up front risk.

Today’s world necessitates innovative partnering  with outside technology generators to leverage R&D budgets and find new profitable ventures. Joint development agreements, joint ventures, licensing programs and technology transfer activities are at the forefront of IP strategies for these leveraged companies. Couple this trend with an ever-increasing desire by most clients to avoid litigation and IP transactional activities are more and more a part of project management for many of these same companies. Jonathan knows what it takes to get return on investment. If you’re a start-up, your exit starts with the first patent application. If you’re a Fortune 100, your return depends on up-front intelligence and focused development. He knows both.

Another direct beneficiary of Jonathan’s business approach are clients who need assistance with the many IP issues unique to due diligence projects. Technology based deals, whether in or out, require smart IP understandings of the issues relevant to valuation. Risk is only managed well when a complete understanding of the long-term obligations is driving the decisions.

What Clients Can Expect

Jonathan is widely recognized for his seemingly adrenalized commitment to making everyone around him seek excellence daily. His relaxed and often humorous approach to public speaking has sometimes been confused for what is, in reality, a very intense and decisive executive leadership style. He is sharply driven to bring success to his clients.

Jonathan’s practice and thought processes evidence his understanding of big-picture, business first, decisions in all areas of a client’s IP management.  A global supply chain means risks in every jurisdiction involved, from raw material procurement, to customer uses of client products. Smart claim drafting and prosecution can ultimately provide a client with not only a good offensive position, but also good opportunities if a defensive position is ever needed. This kind of across-the-board approach to prosecution is what adds real value to a client’s portfolio.

Succeeding in today’s world means making decisions with international implications for your business. Jonathan’s focus on smart IP strategic planning has helped the firm’s clients get products to market in global supply chains. He has advised regarding patent scope and enforceability (both for client’s patents and those of a client’s competitors). He has added value by leading purposeful and deliberate claim drafting strategies during prosecution. He has led the development of assertion positions (both plaintiff positions and licensor positions) and actively advises on general patenting and enforcement trends of specific client competitors.  All of this is done with an eye toward value – value which is derived from the fact that he counsels   with a focus on reality and business, not just academic law.

Outside the Office

Jonathan and his beautiful wife, Melissa, have three wonderful sons, Henry, Jacob, and Jonathan.  Both Jonathan and Melissa are Penn State alumni. Henry (American Studies) and Jacob (Aerospace Engineering) are students there now, and Jonathan is in high school patiently awaiting graduation in 2025 after which he too will attend Penn State (Chemical Engineering). Together they all enjoy the outdoors, including spending time at their farm in south central PA, where they relax, fish, hike, hunt and enjoy the outdoors. Melissa prefers the Jersey Shore. 

Proof Points

• Lead counsel for a European company opening its first R&D site in the U.S. Issues included patent strategies, licensing strategies, JDA’s, labor and employment, GDPR, import/export controls and data security.
• Counseled a European company on ITC 337 strategy with trade secret theft as the underlying action.  The matter was resolved without litigation.
• Successfully resolved a dispute for a global industry leader when a key employee left with stolen trade secrets to a Chinese competitor.
• Ended or prevented district court litigation for several clients through effective use of post grant proceedings at the USPTO.
• Helped countless clients avoid costly disputes and litigation by developing strong legal positions, while maintaining a grounded emphasis on the business realities of the dispute and relationship.
• Transitioned clients from pre-litigation counseling to expert litigation attorneys when business drivers necessitated that decision.