Michael D. Oliver, Esq.

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Mr. Oliver is the head of the Corporate, Business and Intellectual Property (“IP”) department at Oliver & Grimsley. As the department head, he oversees the firm’s general approach to corporate and business transactions, and resolving IP issues for clients, and works with the other attorneys and the department’s administrative assistant.  If you would rather read about his personal story than this bio, see Mike’s personal story – the short version.

The Corporate and Business department engages in all aspects of privately held business issues, including but not limited to entity formation, jurisdiction selection, form of entity and structuring, financing, stockholder and operating agreement drafting and review, corporate reorganizations, divestitures, mergers, acquisitions (stock and asset), and all other non publicly traded corporate issues that may arise.  We also handle basic corporate tax issues (e.g. C Corp and S Corp issues and partnership pass through issues).  The Corporate and Business department also engages in negotiating nearly any form of agreement that may arise.  Some, but not all of the agreements we have negotiated: website and software development agreements, software licenses (on premise, hosted, software as a service, platform as a service and subscription), merger agreements, asset purchase agreements, stock purchase agreements, membership interest transfer and purchase agreements, clinical trial agreements, assignment agreements, endorsement agreements, entertainment agency agreements, evaluation agreements, loan agreements, promissory notes, guaranty agreements, security agreements, information security agreements, service level agreements, inter creditor agreements, investor rights agreements, join venture agreements, non disclosure agreements, letters of intent, memorandums of understanding (both binding and non binding), terms of service, privacy policies, restrictive covenant agreements, employment agreements, referral agreements, teaming agreements, stock option agreements, sponsored research agreements, alliance agreements, transition service agreements, and subordination agreements.

The IP department performs all types of IP services – which include patent prosecution (filing patent applications and shepherding them to issuance), freedom to operate opinions, patent and IP counseling and consulting, including novelty and enforceability reviews, trademark prosecution, all forms of inter partes (opposition, cancelation petitions) and ex-parte proceedings (office actions, re-examination requests, letters of protest) before the United States Patent and Trademark Office, copyright registration and consulting services, and all types of IP litigation, for both plaintiffs and defendants throughout the United States.

In Mr. Oliver’s direct practice, he focuses on transactional corporate, business and intellectual property matters – that is, negotiating and reaching a deal on transactions between parties, often that involve IP. Mr. Oliver has extensive experience in contractual negotiations involving software, intellectual property rights, and contracts involving commercialization of other non-tangible rights. These agreements include software licensing, distribution and development agreements, patent license agreements, trademark license agreements – both on an international and intra country basis, teaming agreements, joint venture agreements and medical device development and commercialization agreements, to name a few.

Mr. Oliver also represents technology based clients in corporate transactions, such as asset protection and liability risk reduction structuring, financing, including venture capital lending, equity infusion (exempt securities transactions), mergers and acquisitions, and other types of corporate transactions for technology based companies.

Mr. Oliver also advises clients on advertising and Lanham Act issues (false and misleading advertising, dilution, tarnishment, violations of privacy and publicity, and online defamation).

For the last 10 years Mr. Oliver co-taught the course “Engineering Law and Ethics” at the Graduate School of Management Engineering, University of Maryland Baltimore Campus (UMBC) – retired in 2017. Mr. Oliver helped design this course for UMBC; it has since become a core course for Engineering Management track candidates at UMBC. In the past, Mr. Oliver has also taught Introduction to Intellectual Property Practice, and Cyberspace Law Seminar at the University of Maryland School of Law.

Mr. Oliver is also a frequent speaker on computer law, the internet, and has given talks and seminars on advertising law and internet web pages, for among other organizations, Glasser Legal Works (NY City), the Maryland State Bar Association (MSBA), the Intellectual Property sub-committee of the Business Law Section of the MSBA, the Maryland Institute of Continuing Professional Education for Lawyers (MICPEL), the Pennsylvania Bar Institute (PBI), and the Baltimore County Bar Association.

In his off time Mr. Oliver, a computer programmer since he was about 14, continues to write software programs (principally in Node, Vue, and Laravel), do other geeky things, and play the classical guitar – being a past president of the The Baltimore Classical Guitar Society, Inc. – www.bcgs.org

Practice Area:

  • Business Transactions
  • Intellectual Property Litigation
  • Intellectual Property
  • Internet and Technology and Privacy Law
  • Mergers and Acquisitions
  • Licenses

 Admissions

  • Admitted to the Maryland Bar (1989)
  • Admitted to the District of Columbia (1991)
  • Admitted to practice before the United States Federal District Court for the District of Maryland, and the United States Federal District Court for the District of Columbia
  • Admitted to practice before the United States Court of Appeals for the Fourth Circuit
  • Certified Public Accountant, Certificate No. 012635 (August, 1986) (inactive)

Education

Case Western Reserve University (B.S., magna cum laude, 1986)

University of Baltimore (J.D., summa cum laude, 1989; second in graduating class)

  • Managing Editor, Law Review, 1988-1989.
  • Co-Recipient Law Faculty Award.
  • Recipient, Elijah Watt Sells Award (CPA)

 Affiliations

  • Maryland State Bar Association (MSBA)
    • 2014-2015 – Chair, MSBA Intellectual Property Section
    • 2000-2001: Chair, MSBA Technology Committee
    • Member, Young Lawyers Section (“YLS”), MSBA (Member at Large, 1997-98; Secretary, 1998-99)
    • YLS representative to the Small Firm and Solo Practice Section, MSBA (1998-99)
  • Maryland Institute for the Continuing Professional Education of Lawyers, Inc.
    • 2001 – 2003: President
    • 2000-2001: Vice President
    • 1999-2000: Treasurer
    • 1997-2000: Member, Board of Trustees (YLS rep, Member at Large)
    • 1997-2003: Member, Executive Committee, Board of Trustees
  • The Daily Record 1999 – 2004: Member, Editorial Board

Service

  • Past President, The Baltimore Classical Guitar Society, Inc. (1997-1999)
  • Past President, Maryland Institute of Continuing Professional Education for Lawyers (2001-2003)

Cases

  • Sun Dun Inc. of Washington v. Coca-Cola Co., 770 F.Supp. 285 (D. Md. 1991) (antitrust)
  • Washington Properties Ltd. Partnership v. Resolution Trust Corp., 796 F. Supp. 542 (D. D.C. 1992) (federal banking law)

 Work Experience

  • Oliver & Grimsley, LLC — May 2013 to present
  • Bowie & Jensen — August, 1995 to April, 2013
  • Whiteford, Taylor & Preston — May, 1988 – August, 1995
  • White, Mindel Clarke & Hill — November, 1986 – May, 1988
  • Ernst & Whinney (now Ernst & Young) — January – November, 1986

Courses & Seminars Taught (partial)

  • Brand & Content Protection – legal issues in web and mobile (Speaker, Business Law Institute, MSBA, April 27, 2013)
  • Social Media Marketing Law (presentation given to Marketing Director’s Support Group, Howard County Chamber of Commerce, Better Business Bureau, and the User’s Conference for SiteExecutive, Systems Alliance) (May – November 2011)
  • Intellectual Property Issues in the Health Care Industry (unpublished) (manuscript overview of special intellectual property rules for medical practioners) (2010)
  • Privacy Law in e-Commerce (Maryland Institute for the Continuing Education of Lawyers, Inc.) (2009) (discussed the Safe Harbor rules for cross border data transfers)
  • Anatomy of Software Deals and Hiring Computer Security Professionals (Philadelphia; for the Pennsylvania Medical Group Management Association) (May 21, 2008)
  • Document Retention and Destruction (Lorman; 2008)
  • Data Protection Law (given to various chambers of commerce and other providers throughout 2007 and 2008)
  • Software Licensing Basics (Pennsylvania Bar Institute; August, 2004) (served as a steering committee and organizer for several years for their IP update series)
  • Business Document Drafting Series, Intellectual Property Contracts (Pennsylvania Bar Institute; August 2004)
  • Advanced Seminar: Cyberspace Law (Spring Semester, 2004 University of Maryland School of Law)
  • Advanced Topics in Software Licensing (Pennsylvania Bar Institute Technology Forum July 23, 2003)
  • Computer Security and UETA in Government, (MICPEL, May 9, 2003)
  • Contract issues in Computer Software Development (Maryland Judicial Institute – taught a section of the course to Judges of the Maryland Business and Technology Court; April 2003)
  • Guest Practioner: Intellectual Property Workshop (University of Baltimore School of Law – 2000-2002, 2004)
  • Introduction to Intellectual Property Practice (University of Maryland School of Law Fall Semester 2000)
  • Introduction to eCommerce (MICPEL; 2000)
  • Computer Law Update (MICPEL; 1998)
  • Computer Law (MICPEL; 1997)
  • Advertising Law (MICPEL; 1997)
  • Speaker, MSBA Mid Year Technology Show (various topics; 1996 – 1999)

Publications (partial)

  • “Risk Management Strategies: Remedies in Intellectual Property Cases,” Vol. 36, No. 6, Maryland Bar Journal, at 2 (November 2003)
  • “Technology, the Internet and the Practice of Law,” Vol. 34, No. 6, Maryland Bar Journal, at 2 (2001)
  • “Establishing, Protecting and Enforcing Copyrights in Software: A Primer”, Volume 31, No. 3, Maryland Bar Journal at 28 (May/June 1998) (Co-Authored with Ned T. Himmelrich).
  • Advertising Law, MICPEL, April 23, 1997 (co-presented with J. Astrachan; only my portion reproduced here)
  • Computer Law, MICPEL, March 19, 1997 (co-presented with W. Galkin; only my portion reproduced here)
  • “Protecting Clients’ Unique Property Interests”, Vol. 29, No. 5, Maryland Bar Journal, at 22 (1996)
  • “In Pursuit of the Elusive TRO”, Vol. 19 Litigation, No. 4, at 25 American Bar Association (1993; co-Authored with Jack L.B. Gohn).
  • Contributing Editor, Maryland Practice Forms (MICPEL, 1995)
  • “Antitrust Liability for Bad Faith Assertion of Trade Secrets,” 18 U. Balt. L. Rev. 544 (1989) (file is 102K).

Categories

Recognition


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