IP Transactions
Drafting, reviewing and negotiating complex IP and technology agreements, including licenses, acquisitions, assignments and other strategic arrangements.
Intellectual Property Counsel
Practical IP counsel for complex technology and intellectual property.
Business-focused intellectual property counsel with 15+ years of experience developing, protecting, and commercializing IP for global healthcare and technology organizations.
Services
Flexible, senior-level IP support for companies, law firms and other organizations that need sophisticated counsel without necessarily adding a full-time position.
IP Counseling
Practical advice on patent strategy, IP risk, ownership, third-party rights, portfolio issues and the legal implications of technology and product decisions.
Patent Strategy
Patent portfolio counseling, invention review, prosecution strategy, outside-counsel management and coordination with technical and business teams.
Technology & Healthcare
IP support for technology-driven businesses, with experience addressing sophisticated healthcare and medical-technology environments.
Legal Consulting
Senior-level project support for organizations that need experienced IP judgment on a defined matter, transaction or business initiative.
Outside / Of Counsel Support
Flexible collaboration with law firms and legal departments on matters requiring experienced IP counseling and transactional support.
15+ years of senior IP experience.
Berman IP Counsel, LLC brings the perspective of senior in-house IP leadership to companies, law firms and organizations that need sophisticated, business-oriented counsel. Randall M. Berman is a USPTO Registered Patent Attorney with 15+ years of experience at Philips and Heartstream, following earlier patent-practice experience at Dorsey & Whitney LLP and Davidson, Davidson & Kappel LLC.
His experience spans patents, trademarks, licensing, transactions, litigation, portfolio strategy, M&A due diligence, divestments, freedom-to-operate and product IP risk assessments, with substantial technical depth in medical devices, imaging, digital health, hardware, software and advanced technologies.
“The goal is not simply to identify legal issues. It is to help clients make sound business decisions while protecting and maximizing the value of their intellectual property.”
Background & selected experience
Philips / Heartstream
Senior IP Counsel from 2013–2026, including Senior IP Counsel for Heartstream US LLC. Served as IP lead for Heartstream's divestment from Philips and established the IP function, infrastructure and operating model for the newly independent company.
IP Transactions & Divestments
Led IP divestment strategy covering patents, trademarks, design rights, trade secrets, know-how, agreements, systems and external service providers, including disentanglement and transfer of IP rights and agreements.
Litigation & Licensing
Managed outside counsel in multi-suit litigation and negotiated an eight-figure settlement and licensing agreement. Also handled licensing initiatives, development and collaboration agreements, and commercial agreements.
Patent Practice
Earlier patent-firm experience includes drafting 50+ patent applications and prosecuting 250+ U.S. and international patent matters across medical devices, imaging, software, bioinformatics, mobile and consumer products.
IP Leadership
Led IP training workshops for R&D, Sales, Marketing, medical practitioners, executives and leaders worldwide; managed inside and outside counsel, global service providers, budgets and IP valuations.
Technical Depth
Experience includes AED/ALS defibrillators and monitors, CPR systems, image-guided therapy, robotics, MRI, ultrasound, surgical devices, bioinformatics, AI, software, mobile technologies, automation, automotive and aerospace systems.
Core capabilities
A combination of legal, technical and business experience enables direct support on matters that cross traditional IP boundaries.
IP Strategy
Portfolio strategy, optimization, valuation, commercialization, competitor analysis and technology control-point initiatives.
IP Transactions
Drafting, reviewing and negotiating complex intellectual property and technology agreements, including licenses, development and collaboration agreements, acquisitions, assignments and strategic commercial arrangements.
Portfolio Management
Strategic management of U.S. and international patent and trademark portfolios, including invention review, prosecution strategy, portfolio optimization, budgeting, valuation and outside-counsel oversight.
Leadership & Mentoring
Leading, managing and mentoring attorneys and other professionals, including providing strategic guidance, coordinating cross-functional teams, and overseeing internal and outside counsel and global service providers.
Acquisitions & Divestments
IP strategy and execution for acquisitions, divestments and other corporate transactions, including risk and due diligence, ownership and third-party-rights analysis, IP valuation, agreement review, and the transfer and disentanglement of IP rights, assets and agreements.
Innovation
Invention harvesting and workshops, working closely with executive leadership, R&D, Sales and Marketing teams, and individual inventors to identify and develop valuable innovations, shape focused IP strategies, and build strong, commercially aligned IP positions.
Flexible engagement models
Engagements can be structured around the client's needs rather than a one-size-fits-all model.
Project-Based
Focused assistance with a transaction, agreement, portfolio issue, diligence project or other defined IP matter.
Ongoing Counsel
Continuing outside IP support for companies that need experienced counsel without a full-time senior IP position.
Law Firm Collaboration
Of Counsel or consulting support for law firms seeking additional senior IP transactional or counseling capacity.
What clients can expect
- Business-oriented advice grounded in the realities of product development and commercial objectives.
- Hands-on senior involvement rather than delegating substantive work through layers of personnel.
- Flexibility to support a single matter, an ongoing need or a broader IP initiative.
- Clear communication with executives, engineers, scientists, business leaders and legal teams.
Let's discuss your IP needs.
For consulting, outside counsel, Of Counsel, project-based or ongoing IP engagements, please get in touch to discuss the matter and an appropriate engagement structure.
Email: randall.m.berman@bermanipcounsel.com
Admissions: New York • New Jersey • U.S. District Court for the Southern District of New York • U.S. District Court for the District of New Jersey
Credential: USPTO Registered Patent Attorney
Location: United States | Serving clients on a flexible basis
Berman IP Counsel, LLC provides legal services only within jurisdictions in which its attorneys are authorized to practice. Nothing on this website is intended to constitute legal advice or create an attorney-client relationship. An attorney-client relationship is formed only through an appropriate written engagement.