Jeff Morton is a partner in our Orange County, Los Angeles and Phoenix offices who represents start-up and large enterprises for their intellectual property and commercial law needs. He serves as external IP counsel to dozens of companies around the world, and also represents numerous leading international law firms to protect their clients’ intellectual property rights in the United States.
Jeff has significant patent prosecution and strategic patent counseling experience in a wide range of technology areas including genomics, immunology, molecular biology, and organic chemistry. He also has an active trademark and transactional practice, and has represented clients in numerous intellectual property-related transactions. He is regularly called upon to give timely and cost-effective advice when clients are commercializing their intellectual property assets. Due to his bar admissions in the United States and Canada, Jeff's practice includes providing cross-border advice to Canadian clients operating in the U.S., and vice versa.
University of Pennsylvania, Wharton School (Leadership & Management Certificate, 2019)
University of British Columbia, Faculty of Law (J.D., 2007)
Associate Editor, U.B.C. Law Review
Washington University in St. Louis, School of Medicine (Ph.D., Immunology, 2004)
University of Victoria, Faculty of Science (B.Sc., Biology and English, with distinction, 1998)
"Negotiating IP Rights in Industry Sponsored Research Agreements," Co-Presenter, Strafford Webinar (October 16, 2018)
“From the Lab to the Marketplace,” Invited Lecturer, University of Arizona, Tech Launch Arizona (2017)
"Intellectual Property Bootcamp," Invited Lecturer, University of British Columbia (2015)
"Intellectual Property Licensing: Key Differences Between Canada and the United States," Invited Lecturer/Co-Presenter, Intellectual Property Institute of Canada (2014)
"Intellectual Property Protection and Commercialization," Guest Lecturer, Thompson Rivers University Faculty of Law (2014)
"Protecting Your Client's Intellectual Property: An Overview of the Different Forms of IP Protection," Guest Lecturer, South Asian Bar Association of British Columbia (2013)
"Intellectual Property Management and Technology Commercialization," Course Instructor, University of British Columbia Faculty of Applied Sciences (2013)
"Enforcing IP Rights in Canada," Guest Lecturer, USLAW Conference (2013)
"IP Commercialization and Patent Licensing," Guest Lecturer, University of Victoria Faculty of Law (2013)
"Commercializing Intellectual Property," Guest Lecturer, British Columbia Association of Institutes and Universities (2013)
"Provisional Patent Application to Commercialization," Guest Lecturer, British Columbia Inventors Society (2013)
"Introduction to Patent Licensing," Guest Lecturer, University of Victoria Faculty of Law (2012)
"Intellectual Property Overview: Trade-marks, Copyrights, Patents and IP Licensing," Guest Lecturer, Edwards, Kenny & Bray LLP (2012)
"Foundations of Intellectual Property: Trade-marks, Copyrights, Patents and IP Licensing," Guest Lecturer, University of British Columbia Faculty of Applied Sciences (2012)
"The Role of Patents in Drug Research," Guest Lecturer, Centre for Drug Research and Development (2010)
"Trade-mark Infringement on Online Auction Sites," Guest Lecturer, University of British Columbia Faculty of Law (2008-2010)
"Patentability of Computer-Implemented and Medical Use Inventions in Canada," Author, Knowledge Bytes (September 2013)
"Navigating the New Copyright Waters," Author, Risk 101, Vol. 7, Iss. 2 (Spring 2013)
"Patent Due Diligence in M&A Transactions," Author, Business Matters (April 2013)
"Declaring Control in Expungement Proceedings," Author, Canadian Trademark Blog (2013)
"2013 – A New Year Rings in with a New Copyright Landscape in Canada," Author, Knowledge Bytes (February 2013)
"Navigating the New Copyright Waters," Author, Campus Counsel (February 2013)
"No Quid Means No Quo – Supreme Court of Canada Invalidates Patent," Author, Knowledge Bytes (December 2012)
"Engineering a Successful Trademark Opposition: Canada's Federal Court finds that KELLY ENGINEERING RESOURCES mark is deceptively misdescriptive," Author, Canadian Trademark Blog (2012)
"The Sound Prediction Test in Canada: Where did it come from and where is it going?," Co-Author, Intellectual Property, R. Dimock Ed. (2012)
"CoreLogic, Inc. v. MLXjet Media Corp.," Author, Case Brief in Canadian ReMARKS (June 2012)
"Federal Court of Appeal upholds irrevocable abandonment of patent application," Author, International Law Office Intellectual Property Newsletter (January 9, 2012), Lexology (November 17, 2011), IP Perspectives (Autumn 2011)
"Kost Klip Manufacturing v. BGI Holdings Inc.," Author, Case Brief in Canadian ReMARKS (July/August 2011)
"A 'Bright Line' for the Patentability of Stem Cells?," Co-Author, Intellectual Property, R. Dimock Ed. (2010)
"Canadian Intellectual Property Office news," Co-Author, International Law Office Intellectual Property Newsletter (November 2010), IP Perspectives (Autumn 2010), World Trademark Review Daily (October 2010)
"CIPO proposed changes to post-Final Action procedures," Author, International Law Office Intellectual Property Newsletter (November 2010), IP Perspectives (Autumn 2010)
"Federal Court clarifies Final Action and post-appeal procedures," Author, International Law Office Intellectual Property Newsletter (September 2009), IP Perspectives (Summer 2009)
"Copyright Board of Canada Issues Revised Tariff Schedules," Author, World Media Law Report (May 2008)
"Canada's proposed amendments to the Copyright Act," Co-Author, IP Connections (March 2008)
Flinn Foundation Bioscience Roadmap Steering Committee, Member (2019)
i9 Sports, Baseball Coach, Volunteer
Phoenix Chamber of Commerce Bioscience Leadership Council, Board Member
TGen Foundation, Ambassador
University of Victoria Alumni Association
Arizona Branch Contact
Wilson Sonsini Goodrich & Rosati, Associate (2014-2016)
