Jason A. Bernstein

Partner
  • Prominence in Buckhead
    3475 Piedmont Road N.E.
    Suite 1700
    Atlanta, GA 30305-3327
    P:404-264-4040
    F:404-264-4033

Jason A. Bernstein is a partner in the Atlanta office of Barnes & Thornburg LLP, where he is a member of the firm’s Intellectual Property Department and Co-Chair of the Data Security and Privacy Practice Group

Mr. Bernstein is a business advisor clients rely on to develop, manage and protect the value of their innovations and intellectual property (IP) assets. For more than 33 years, he has focused his practice on strategic enhancement and protection of clients’ innovations, brands and creations via patents, trademarks, and copyrights, as well as preparing and negotiating technology and business agreements.

Intellectual Property Protection and Counseling

Mr. Bernstein counsels startup and established technology, manufacturing, and services companies as well as universities in various fields, including medical devices, organic chemistry, polymer chemistry, pharmaceuticals, microencapsulation of biologics, monoclonal antibodies, immunoassay diagnostic methods and devices, software, and mechanical apparatus and methods. He also works with clients in trademark selection and clearance, registration, licensing and infringement. He has worked with a wide range of trademark portfolios in restaurants, personal health care, nutraceuticals, software and hardware, apparel, medical devices, manufacturing, equipment, and financial services. Strategic IP planning and due diligence investigations related to mergers and acquisitions are services Mr. Bernstein also provides clients.

Agreements

In his transactional practice, Mr. Bernstein works with vendors and buyers to draft and negotiate agreements that improve profitability, reduce expenses, minimize exposure to liability and reduce the time to close the deal. He has drafted and negotiated numerous agreements in licensing, technology transfer, manufacturing, distribution, supply, support, outsourcing, web and cloud hosting, website development, R&D, joint development and other areas. Companies also look to Mr. Bernstein to help improve their contracting processes by evaluating current approaches and training sales representatives and executives on how to improve their negotiating effectiveness.

Recent Transactions

  • Drafted and negotiated several managed services agreements for a medical logistics software company. Successfully negotiated language that avoided the client from being classified as a HIPAA “business associate,” saving the client from the expense and time of becoming compliant.
  • Drafted and negotiated cloud storage and data hosting agreement where personally identifiable information access and protection was a significant concern.
  • Co-managed client’s average annual flow of 1,000 IT vendor agreements requiring review and approval. Designed and implemented processes to triage and reduce the turnaround time for getting agreements reviewed and back to contract analysts.
  • Negotiated dozens of licensing agreements for a client in the library software field where customers are municipalities, each having local and state law differences and restrictions on client’s actions.
  • Helped a restaurant chain prepare a trademark and recipe licensing agreement with a manufacturer where secrecy of the company’s recipes was critical.
  • Developed template agreements for client to reduce the number of one-off transactions and improve the efficiency of negotiating consistent terms.

Background

Prior to joining Barnes & Thornburg, Mr. Bernstein was a partner with Bryan Cave Powell Goldstein in Atlanta, GA. He was also the founder and managing partner of an IP law firm, director of business development in multifocal lens technology for Ciba Vision Corporation, and was patent and general counsel for Murex Corporation, a medical device and immunoassay diagnostics manufacturer.

Mr. Bernstein is co-inventor on U.S. Patent Nos. 8,240,113; 6,855,424; 6,834,762; and D473,113. and has been a guest lecturer at a number of universities, including the University of Georgia, Georgia Institute of Technology, and Georgia State University as well as various industry trade organizations.

Community Involvement

He also is a member of the American Intellectual Property Law Association, Atlanta Bar Association, International Trademark Association, Technology Association of Georgia and Product Development & Management Association. Additionally, he is a member of the State Bar of Georgia’s Technology Law Section and the Intellectual Property Section of which he served as chair from 1999-2000. He is also a member of the IP Licensing Standing Committee of the Intellectual Property Owners Association.

Mr. Bernstein is AV-rated by Martindale-Hubbell and was recently recognized by American Lawyer Media and Martindale-Hubbell as a 2013 “Top Rated Lawyer in Intellectual Property.” In addition, he was recognized in 2003 and 2008 by Georgia Trend magazine as one of the Georgia Legal Elite attorneys. He was awarded 2012 Volunteer of the Year by the Pro Bono Partnership of Atlanta for his work helping nonprofit companies with their intellectual property matters.

Mr. Bernstein is or has been a member of the board of directors of the Atlanta Symphony Orchestra, HealthMPowers, Inc., and the Product Development and Management Association (Georgia Chapter). He is on the advisory board of Dad’s Garage Theatre Company, and is a member of the Georgia Lawyers for the Arts. He is also a member of the advisory board of Public Broadcasting Atlanta (public television and NPR radio stations).

Mr. Bernstein is married and has three teenage sons. He enjoys playing tennis and learning fingerstyle guitar.