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Jonathon K. Hance

Hance, Jonathon K.

Associate

P +1.713.221.1125
F +1.800.404.3970
jonathon.hance@bgllp.com

Assistant

Chris Garza-Guhl
+1.713.222.3069

Mr. Hance focuses his practice on energy and intellectual property litigation, with an emphasis on complex commercial disputes relating to energy-supply agreements, and particularly, ISDA Master Agreements, in the oil and gas, liquefied natural gas (LNG), trading and marketing, renewable, solar, chemical, and petrochemical industries. His litigation practice also includes cases of patent infringement, trademark infringement, false-marking, and misappropriation of trade secrets in the areas of software, open-source code, mobile devices, computer hardware, gTLDs (generic top-level domain names), and network infrastructures. Mr. Hance served as a judicial clerk to the Honorable Jennifer Walker Elrod of the United States Court of Appeals for the Fifth Circuit.

Mr. Hance represents an array of international clients in the energy, oil and gas, technology, software, media, advertising, radio, banking, payment processing, retail, transportation, medical, food and beverage, and aerospace and defense industries.

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In addition to his litigation practice, Mr. Hance focuses on the licensing of intellectual property, including patents, copyrights, trademarks, trade secrets, and know how relating to advanced computer-implemented technology, including computer software programs, database architectures, computer interfaces, and business systems. He is also actively engaged in patent prosecution and technology transfer in the advanced-technology sector with particular emphasis on computer implemented systems and methods incorporating advanced mathematical algorithms. Because of his experience in financial derivatives and mathematical modeling, Mr. Hance also helps clients protect, license, or transfer financial models, business methods, and other intellectual property assets. In addition, Mr. Hance has conducted intellectual property and software due diligence for numerous mergers, acquisitions, and investment transactions.

Prior to the practice of law, Mr. Hance served as the Director of Information and Technology for a mid-size restaurant company where he actively participated in key technology and business decisions relating to corporate back-end computing services, point-of-sale and point-of-transaction systems, and web-interface design. He also served as a Mathematical Consultant for the Bank of America Private Bank where he developed financial portfolio projection and analysis software using the Monte Carlo method.

Representative Matters

Represented a large, international oil and gas company in preparing patent applications for inventions relating to oil production, energy delivery, production metrics, and automation controls.

Advised a green-energy company in numerous licensing matters, including non-disclosure agreements and international commercial-development agreements.

Provided counsel to a large energy-services company in relation to a technology collaboration agreement between the company and an engineering company serving the energy and power sectors.

Represented one of the largest full-service, privately-held, in-store U.S. banks in various software-licensing, software-escrow, and professional-services agreements.

Analyzed and provided counsel regarding hundreds of open-source licenses for software-development company in preparation for sale of the company to one of Canada's largest wireless device and telecommunications companies.

Drafted letter to the Internet Corporation for Assigned Names and Numbers (ICANN) on behalf of one of the world's largest internet retailers commenting on ICANN's proposed trademark protection measures for new gTLDs.

Drafted terms and conditions, privacy policy, security policy, and software license agreement for health service organization providing services to college and university campuses.

Represented international financial management company seeking trademark protection before the United States Patent and Trademark Office (USPTO).

Represented hardware and software company regarding licensing of its intellectual property rights to a global computer hardware and device manufacturer.

Prepared patent applications relating to aviation controls and automation metrics for a large U.S. aerospace, security, and defense company.

Publications and Speeches

"Lame-Duck Patent Reform Goes Almost Entirely Unnoticed," Law360, December 2012

"Federal Circuit Clears Pathway Through 'Recapture Rule' Minefield," Thomson Reuters News & Insight, June 2012

"All I Really Need to Know About Trial I Learned in Traffic Court," UHY Advisors, June 15, 2011

"Preparing for Hurricane ICANN," Baseline, November 2009

"Dot California or Dot Bust: Striking Gold in ICANN's New Domain Spaces," Internet Retailer, August 5, 2009

"Land Rush in Cyberspace: ICANN’s Proposed Game-Changer and Its Impact on Trademark Rights," Bloomberg Technology Law, July 27, 2009

"Derivatives at Bankruptcy: Lifesaving Knowledge for the Small Firm," 65 Washington & Lee Law Review. 711, 2008

Education

J.D., magna cum laude, Order of the Coif, Washington and Lee University School of Law, 2008
B.A., Computer Science, summa cum laude, Southern Methodist University, School of Engineering, 2005
B.A., Viola Performance, summa cum laude, Southern Methodist University, Meadows School of the Arts, 2005
B.A., Applied Mathematics, summa cum laude, Southern Methodist University, Dedman College, 2005

Bar Admissions

Texas

Court Admissions

U.S. Supreme Court
U.S. Court of Appeals for the Fifth Circuit
U.S. District Court for the Northern, Southern, Eastern, and Western Districts of Texas

Certifications

Certified Licensing Professional

Affiliations

Bar Association of the Fifth Federal Circuit
State Bar of Texas
Texas Young Lawyers Association
Houston Bar Association
Houston Intellectual Property Law Association; Science Fair Committee
Licensing Executives Society, U.S. and Canada; Software Committee 2009-present

Noteworthy

Judicial Clerk, United States Court of Appeals for the Fifth Circuit
Legal Counsel, Frame Dance Productions
Managing Editor, Washington and Lee Law Review
Phi Delta Phi