Schaafsma, Paul E.

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Address: 521 West Superior St. #221, Chicago, IL 60610
Lawyer Firm: Novus IP LLC
Phone: (312) 664-0906

Areas of Practice Contracts, Intellectual Property Law, Internet — Cyberspace, Patents, Science & Technology Law, Trademarks, Financial Technology / Patents

Paul E. Schaafsma left a partnership at a national law firm to form NovusIP, LLC, an intellectual property consulting firm. Mr. Schaafsma formed NovusIP based on the belief clients deserve integrated, high quality, cost effective intellectual property services. Mr. Schaafsma concentrates his practice in the procurement, commercialization, and enforcement of technology rights and has spent his career on the cutting edge of what is considered patentable: software in the 1980s, Internet in the 1990s, and, now, finance.

Mr. Schaafsma is one of the few attorneys with training in both electrical engineering (B.S. Engineering, Purdue University) and business (M.B.A. Northwestern University’s Kellogg Graduate School of Management). Throughout 20 years of legal practice, Mr. Schaafsma has counseled numerous clients regarding structuring, negotiating, documenting, and managing relationships related to technology, including licensing, acquisitions, joint ventures, research and development, marketing, distribution, and consulting. He has led teams responsible for the acquisition and divestiture of major technology assets. He has extensive experience in all phases of intellectual property law practice, including patent prosecution, patentability and infringement analysis, and client counseling involving a wide variety of technological products.

Among his accomplishments, Mr. Schaafsma:

Authored The Entrepreneur’s Guide to Managing Intellectual Property, PSI Research – Oasis Press; ISBN: 1555716172; (March 1, 2002).

Managed U.S. and foreign intellectual property assets for a large ($900 million revenue; $20 million R&D) division of a major medical products company which produced sophisticated electronic medical products.

Drafted and prosecuted over 100 patents in technologies varying from high tech (radar) to high risk (casino games) to high finance (software).

Coordinated a Fortune 500 manufacturing company’s e-commerce patent initiative.

Structured, negotiated, and drafted agreements for a $5 million stock acquisition of electrochemical technology that included a significant field-of-use technology and patent license-back to the seller.

Structured, negotiated, and drafted agreements for a $10 million asset purchase of a product line that was under threat of patent infringement from a competitor.

Divested manufacturing assets of a consumer electronics client, which included an on-going, semi-exclusive contract manufacturing relationship.

Represented a client in a beta-test of engine technology that included as consideration warrants in the stock of a technology company, which subsequently doubled in value.

Guided research and development efforts to design around key patents, resulting in an extension of an OEM relationship in one instance and establishment of a joint development relationship in another.

Saved a client over $5 million by implementing a strategy to identify sources of non-infringing substitute distributed products.

Mr. Schaafsma is a graduate of Loyola University of Chicago School of Law. He is registered to practice in Illinois, before the United States Patent and Trademark Office, and before the United States District Court for the Northern District of Illinois. He is a member of the Chicago Bar Association, Illinois State Bar Association, American Bar Association, Patent Law Association of Chicago, American Intellectual Property Association, and the Licensing Executives Society.

Mr. Schaafsma is a staff columnist on legal issues for Financial Engineering News ( and is a contributing author to The Law and Business of Licensing, published by Clark Boardman Callaghan (1996, 1998). His publications include An Economic Overview of Patents, Journal of the Patent and Trademark Office Society (April 1995); Patent Mapping: A Graphic Model of Patent Rights, Journal of the Patent and Trademark Office Society (December 1995) (cited in Patent Reform: A Mixed Blessing For The U.S. Economy? Federal Reserve Bank of Philadelphia); An Economic Overview and Suggested Approach for Licensing Patent Applications, Journal of the Patent and Trademark Office Society, (May 1999); Patently Rewarding? Though courts have reopened the patentability of software, not all products will benefit from patent protection, IP Magazine, (March 1998); Functional Language’s Death Knell Is Exaggerated, The National Law Journal (March 1998); High Court Displaying Patent Mistrust In recent years, rulings of the Federal Circuit seem to get no respect in the Supreme Court, The National Law Journal (May 1999); and Court Offers Mixed View of Equivalents Doctrine, The National Law Journal (October 2000).

His recent publications, Trends in the Law: Financial Product Patents, Bank Accounting & Finance (Vol. 16, No. 2, February 2003); Like it or Not, Patents are now part of the Financial Industry, Trading Technology Week Magazine (Vol. 6, No. 40, August 2003); A Sea Change in the Financial Industry, Financial Engineering News (March/April 2004 Issue No. 36), A Gathering Storm in the Financial Industry, Stanford Journal of Law, Business, and Finance (Spring 2004); and Financial Product Patents: An Update, Bank Accounting & Finance (Vol. 18, No. 4, January/February 2006) reflect Mr. Schaafsma’s leading expertise in the emerging area of financial product patents.

Hobbies do not include photography.

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