Meet Your Team

Jill Jacobson | Senior Itellectual Property Counsel

Dr. Jill Jacobson

Senior IP Counsel

| Silicon Valley

Dr. Jill Jacobson focuses her practice in the field of Intellectual Property (IP).  In particular, her practice includes patent drafting and procurement, patent portfolio evaluation, strategic IP counseling, patentability, competitive patent landscape, and freedom to operate analyses and opinions, and due diligence.  Dr. Jacobson has extensive experience developing and managing patent portfolios that include both U.S. and foreign patent rights, and further has significant experience managing European patent oppositions.  She also handles trademark searching and registrations, and drafting and negotiation of agreements related to IP matters.  She is a member of the California State Bar and is also registered to practice before the U.S. Patent and Trademark Office (USPTO).

Prior to her career as an attorney, Dr. Jacobson worked extensively as a scientific researcher in the life sciences field.  She earned her doctorate in biochemistry from UCLA, followed by research positions at the National Institutes of Health and in the biotechnology industry. For over a decade, she performed laboratory research in the fields of metabolic pathway regulation, oncogenesis, and biorational herbicide development.   During her undergraduate and graduate studies, she also completed extensive coursework in chemical engineering and organic and inorganic chemistry.

Believing that her scientific background and communication skills would be useful in protecting intellectual property, Jill earned registration to practice patent law before the USPTO and obtained a law degree. Since 1998, she has specialized in IP procurement and management. Prior to joining Fountainhead Law Group, she worked first at an international AMLAW 100 law firm, then as an in-house IP counsel for a large biotechnology company, followed by three years in a solo practice and eleven years as partner in a distributed AMLAW 200 law firm.

Dr. Jacobson’s background in science equips her to understand and query scientists and engineers while her years of legal experience attune her to her clients’ business goals and target markets.  Clients have ranged from individual inventors to start-ups to large universities and corporations.  Her broad scientific background in the fields of biochemistry, chemistry, and chemical engineering allows her to provide service to a variety of industries, with a special emphasis on life sciences and cleantech/green technologies.  She strives to develop an IP strategy that meets clients’ immediate needs within complex technical and legal landscapes, while strategically positioning them for the future.

EDUCATION

Santa Clara University School of Law, J.D.

University of California, Los Angeles

PhD, Biochemistry

ADMISSIONS

State Bar of California

United States Patent & Trademark Office

Dr. Jill Jacobson

Senior IP Counsel

| Silicon Valley

Dr. Jill Jacobson focuses her practice in the field of Intellectual Property (IP).  In particular, her practice includes patent drafting and procurement, patent portfolio evaluation, strategic IP counseling, patentability, competitive patent landscape, and freedom to operate analyses and opinions, and due diligence.  Dr. Jacobson has extensive experience developing and managing patent portfolios that include both U.S. and foreign patent rights, and further has significant experience managing European patent oppositions.  She also handles trademark searching and registrations, and drafting and negotiation of agreements related to IP matters.  She is a member of the California State Bar and is also registered to practice before the U.S. Patent and Trademark Office (USPTO).

Prior to her career as an attorney, Dr. Jacobson worked extensively as a scientific researcher in the life sciences field.  She earned her doctorate in biochemistry from UCLA, followed by research positions at the National Institutes of Health and in the biotechnology industry. For over a decade, she performed laboratory research in the fields of metabolic pathway regulation, oncogenesis, and biorational herbicide development.   During her undergraduate and graduate studies, she also completed extensive coursework in chemical engineering and organic and inorganic chemistry.

Believing that her scientific background and communication skills would be useful in protecting intellectual property, Jill earned registration to practice patent law before the USPTO and obtained a law degree. Since 1998, she has specialized in IP procurement and management. Prior to joining Fountainhead Law Group, she worked first at an international AMLAW 100 law firm, then as an in-house IP counsel for a large biotechnology company, followed by three years in a solo practice and eleven years as partner in a distributed AMLAW 200 law firm.

Dr. Jacobson’s background in science equips her to understand and query scientists and engineers while her years of legal experience attune her to her clients’ business goals and target markets.  Clients have ranged from individual inventors to start-ups to large universities and corporations.  Her broad scientific background in the fields of biochemistry, chemistry, and chemical engineering allows her to provide service to a variety of industries, with a special emphasis on life sciences and cleantech/green technologies.  She strives to develop an IP strategy that meets clients’ immediate needs within complex technical and legal landscapes, while strategically positioning them for the future.

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Fintech

Ensenta, Inc. (acquired by Private Equity fund)

After linking Ensenta’s core technology innovations to its target market space, Fountainhead successfully navigated Ensenta’s patents through the Patent Office to protect their innovations and markets. Over the years, Fountainhead worked with Ensenta to successfully fend off IP attacks from competitors. These efforts culminated in a successful exit when the company was sold to a private equity firm.

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Microelectronics

Power Analog Microelectronics (acquired by Diodes Inc.)

Power Analog Microelectronics (PAM) was a multinational analog and mixed signal startup. Fountainhead’s expertise in analog, mixed signal, and global IP strategy helped PAM to build a comprehensive IP program to support their global marketing efforts, leading to a successful acquisition by Diodes Inc.

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Microelectronics

Summit Microelectronics (acquired by Qualcomm Inc.)

Summit’s battery charging technology changed the world. When Summit invented a charging algorithm that reduced battery charge time by orders of magnitude (“TurboCharge”), they turned to Fountainhead to protect these vital IP assets. Knowing that companies around the world would stop at nothing to “design around” Summit’s innovations, Fountainhead worked with Summit engineers to craft numerous claim strategies to make their IP as impregnable as possible. Summit was later sold to Qualcomm for hundreds of millions of dollars based in large part on their IP portfolio, portions of which was later asserted against Apple.

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Software

SAP is a global leader in business process software. Since the seminal Supreme Court case of Alice Corp. v CLS Bank, which significantly raised the bar for patenting business process software patents, protecting these key IP assets has been no easy task. For almost two decades, Fountainhead Law has worked with SAP to lead the field in patenting business process software patents, having successfully obtained hundreds of valid and granted patents for SAP and other clients in this nuanced and challenging technology space.

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Wireless

When wireless titan Qualcomm launched its seminal patent lawsuit against Apple, from over 200,000 patents in their arsenal, they selected just 12 patents deemed capable of withstanding the rigors of Apple’s rigorous patent defenses. Fountainhead Law proudly prosecuted two (2) of the selected 12 Qualcomm patents, contributing to Qualcomm’s favorable settlement with Apple of this epic patent battle.

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Software Systems​

When Microsoft’s new CEO, Satya Nadella, set out to transform Microsoft’s strategic vision, the legal team turned to Fountainhead’s broad range of expertise in software, hardware, AI, and other technologies to protect the new technology areas that Microsoft was venturing into. Fountainhead has helped Microsoft preserve the wealth of innovations along their technology roadmaps from software to AI and spanning both the analog and digital semiconductor worlds.