John M. Neclerio is chair of the firm's Technology Transactions and Licensing Practice Group and practices in the areas of general business and corporate law, commercial finance, mergers and acquisitions, distribution and franchising law, patent licensing, software licensing, copyright and trade secret law, computer, e-commerce and technology law, and privacy and data security.
Mr. Neclerio regularly provides general business representation to software, consulting, Internet, e-commerce and technology companies and provides counsel to entities that are licensing or acquiring software or technology related products or services, including advice with respect to agreements to implement open innovation strategies or otherwise commercially exploit intellectual property assets. In this respect, Mr. Neclerio is often involved in negotiating agreements implicating intellectual property licensing issues, including patent, copyright, and trade secrets and know-how, and is not only knowledgeable of intellectual property issues in contracting, including joint ownership rights, but has extensive commercial contracting experience.
Mr. Neclerio also frequently works with lawyers in the firm's healthcare practice group, and assists hospitals, physicians and other healthcare providers with the procurement of IT systems and related vendor services, the drafting and negotiation of IT vendor contracts and software license and services agreements, including contracts regarding electronic health records systems, and issues concerning doing business in an on-line environment, including e-payment systems.
Technology and Business:
Strategic Alliances, Joint Development and Collaboration Agreements:
Mr. Neclerio often assists clients with technology development and joint-development transactions, technology-based joint ventures and agreements regarding strategic alliances, reseller arrangements and patent, technology and know-how license agreements.
Software Licensing, IT Vendor Agreements and Outsourcing:
Mr. Neclerio's experience includes structuring, drafting, negotiating, implementing and/or providing legal advice regarding RFPs and responses, software license agreements (perpetual, subscription and other), database licensing agreements, U.S. and international software reseller agreements, software development and consulting agreements, source code escrow arrangements, open source software issues, ERP implementations, computer services and business process outsourcing transactions, software as a service, cloud-based and/or other application service provider offerings, managed services agreements, hosted agreements, remote backup and recovery services agreements, statements of work and service level agreements, help desk agreements, security services agreements (i.e., penetration testing, vulnerability assessments), co-location agreements, contract interpretation and renegotiation of IT infrastructure or software licensing transactions, copyright protection issues, confidentiality agreements and trade secret issues.
Mr. Neclerio has served generally as counsel to an IT services subsidiary of a Fortune 100 telecommunications company offering data center outsourcing, help desk and remote backup and recovery services and licensing telecommunications software products to the commercial marketplace. He has provided the client with advice regarding risk assessment for RFP opportunities and strategies for the creation of proposals in response to RFPs and legal issues applicable to the company's IT solutions for its existing products and new products and has negotiated the company's vendor agreements, strategic alliances, IT services customer agreements and software license agreements.
Websites and Online Services:
Privacy and IT Security:
Mr. Neclerio has experience with issues regarding the collection, retention, use and protection of personally identifiable or confidential information and is knowledgeable about US privacy and security laws, including federal (such as HIPAA, GLB, SOX, CAN-SPAM, Do-Not-Call, Computer Fraud and Abuse Act, Red Flag Rules) and state (breach notification, personal information protections acts and related statutes), and EU and Canadian privacy laws. He has assisted clients with issues regarding IT security policies and audits and SAS70 Reports and advice regarding a company's use of technology in the workplace.
Contract Negotiation Guidebook Materials and Contract Management Processes and Training:
Mr. Neclerio often develops contract negotiation guidebook materials for clients, including purchasers, service providers and resellers, with provisions reflecting each side of the negotiation and negotiation strategy for clients. He also assists clients with establishing contract management processes and provides training regarding contract terms, strategies and processes.
IT Issues in Mergers and Acquisitions:
Mr. Neclerio has also assisted clients with intellectual property due diligence and has provided advice to clients involved in mergers and acquisitions involving technology companies or intellectual property assets and advice regarding how to transfer software, IT and telecom licensing assets as part of a going concern business transaction. He has managed this process on a large scale for a Fortune 100 enterprise and he and his team know what the license requirements will be for more than 300 software vendors and content providers in the industry. He has also handled due diligence for these sorts of license assets, determining what rights exist for clients and advising clients as to the effect on valuation, including the implication of open source software.
Mr. Neclerio is admitted to practice in Pennsylvania, New Jersey and Florida. He is a member of the Pennsylvania and Philadelphia bar associations and the Florida Bar. Mr. Neclerio is a 1994 graduate of Emory University School of Law, a graduate of the Roberto C. Goizueta Business School of Emory University (M.B.A.) and a graduate of Duke University.
- Represented Quanta Services, Inc. (NYSE: PWR) with respect to intellectual property issues in the sale of five subsidiaries comprising its fiber optic licensing operations to Houston-based Crown Castle International Corp. (NYSE: CCI) for $1 billion in cash.
- Represented Popeyes Louisiana Kitchen, Inc. in connection with the purchase from Diversified Food and Seasonings Inc. ("Diversified") for $43 million of the recipes and formulas for Popeyes' core products and a long term supply agreement for Diversified to manufacture and supply these core products and certain other products to Popeyes.
- Represented Brace Industrial Group L.P., a Houston-based industrial services roll-up, in intellectual property due diligence issues pertaining to its acquisition of Basic Industries, LLC, an industrial services company, for approximately $33 million.
- Represented WANDL, Inc., a software solutions company specializing in advanced network planning, management, design and the optimization of next-generation multi-layer networks, regarding intellectual property and source code software issues in its sale by reverse triangular merger to Juniper Networks, Inc. (NYSE: JNPR) for approximately $60 million.
- Counsel to a Fortune 100 telecommunications company in negotiating and executing hundreds of licensing and other agreements necessary for it to be able to spin off its local exchange and related business assets in four different spinoff transactions, including one that involved the sale of operations in over a dozen states.
- Counsel to a Fortune 100 telecommunications company during its negotiation of a procurement agreement for software and hardware with a major software vendor valued at over 500 million dollars.
- Counsel to an IT services subsidiary of a Fortune 100 telecommunications company offering data center outsourcing, help desk and remote backup and recovery services and licensing telecommunications software products to the commercial marketplace.
- Counsel to a Fortune 100 telecommunications company for development of the online terms for an online marketplace from which software applications that are developed by vendors are licensed and downloaded by subscribers to the company's cloud services.
- Counsel to several software companies offering software as a service, cloud based and/or other application service provider products and services, and companies purchasing licenses to such products, including the creation of contract templates and negotiation guides.
- Counsel to a major state university in its negotiations with a higher education software provider for an enterprise platform, including communications, curriculum, systems and strategic enrollment management.
- Counsel to a software company offering an administrative software solution for grades K through 12 of the public education market.
- Counsel to a local college in the development of its agreements with content providers and other service providers for offering an online curriculum to students.
- Counsel to a local university in its negotiations with Blackboard, Inc. for the license of software and the provision of managed hosting services and other services for its online access to the software.
- Counsel to a university professor in his/her discussions with the university regarding ownership rights for online courses developed and the course content offered by the university through its relationship with an online course provider.
- Counsel to an automotive parts remanufacturer in its negotiation with a major software vendor, an implementer and a hosting company for the hosting of the software for its company-wide ERP system.
- Counsel to a health system during its review of proposals from several vendors for claims management software and its negotiation of the software license and maintenance agreement from the selected vendor, a leading vendor of healthcare software products.
- Counsel to a hospital during its negotiation of a software license agreement for an accounts payable and accounts receivable software system with a leading vendor of healthcare software products.
- Counsel to a hospital during its re-negotiation of its software license and services agreement with a leading vendor of healthcare software products.
- Counsel to an insurance company to negotiate a business process outsourcing agreement for its insurance claims system, including several statements of work and a sophisticated service level agreement.
- Assisted Global Management Technologies Corporation (GMT), a workforce-management software company, with software licensing issues that arose during the sale of its stock to a subsidiary of Verint Systems, Inc. (NASDAQ:VRNT) for an undisclosed sum.
- Counsel to an insurance company to negotiate a software license agreement for a new insurance claims system and the development work for the implementation of the system
- Counsel in a wide range of corporate and intellectual property matters for one of the world's largest information database providers, including the drafting and negotiation of customer contracts, alliance and licensing agreements, the development of new form agreements covering the use of the company's data products and advice regarding e-commerce issues for website content.
- Counsel to a U.S. software vendor marketing and selling licenses to EDI software, including the creation and negotiation of reseller agreements for reseller relationships in the EU.
- Counsel to a managed security service provider regarding choice of entity issues and formation documents, including documentation required to raise $1.5 million in capital. Also advised on service provider agreements, service level agreements, equipment purchase orders and consulting agreements to perform its consulting work.
- Counsel to a state agency regarding the workout of a dispute with the software licensor regarding the scope of the state agency's license rights with respect to a source code license.
- Counsel to a major state university in drafting and negotiating its technology transfer and license agreements.
- Counsel to Quanta Services, Inc., a contracting services company for electric power, natural gas and pipeline industries, for its intellectual property issues during the sale of its domestic telecom infrastructure services to Dycom for $275 million, which included negotiation of a patent license back agreement and a software license back agreement, and its other license agreements licensing its technology.
- Counsel to a leading vendor of business process outsourcing services during the resolution of a dispute with a customer.
- Counsel to a call center in its negotiations with a major health insurer for a call center outsourcing agreement, including sophisticated call center service levels.
- Counsel to clients developing mobile apps and the offering of the same through online app stores and/or markets.
- Counsel to a company with a design patent and utility patent concerning how to license its product in the U.S. marketplace and establish a network of licensees and the drafting and negotiating of the company agreements.
- Counsel to a company licensing under an exclusive license certain voice response system technology.
- Counsel to a company licensing technology for a payment system to a city parking authority.
- Counsel to various companies possessing a utility patent or a method patent to license rights under the patent to make, use and offer licensed products.
Areas of Practice
- Business Law
- Corporate Law
- Commercial Finance
- Mergers and Acquisitions
- Distribution and Franchising Law
- Computer Law
- E-commerce Law
- Technology Law
- New Jersey
- U.S. District Court for the Eastern District of Pennsylvania
- Supreme Court of Pennsylvania
- Supreme Court of New Jersey
- Supreme Court of Florida
- Emory University School of Law, J.D., 1994
- Emory University, Goizueta Business School, M.B.A., 1994
- Duke University, B.A., 1990
- Duane Morris LLP
- Partner, 2005-present
- Associate, 1999-2005
- Eckert Seamans Cherin & Mellott, LLC, Philadelphia, Pennsylvania
- Associate, 1997-1999
- Pennsylvania Bar Association
- Philadelphia Bar Association
- The Florida Bar
- Co-author, "Supreme Court Clarifies Scope of the Patent Exhaustion Doctrine," Duane Morris Alert, June 9, 2017
- Co-author, "Student Data Protection in an Era of Education Technology Innovation," Duane Morris Alert, August 7, 2015
- Quoted in "Wearable Technology Creates New Legal Problems," The Legal Intelligencer, June 16, 2015
- Featured in "Duane Morris Houston Lawyer Leads Quanta Services' Team on $1B Deal," Texas Lawyer, May 8, 2015
- Co-author, "Copyright Law Implications in Video Games and Virtual Worlds," Chapter in Computer Games and Virtual Worlds: A New Frontier in Intellectual Property Law, American Bar Association Section of Intellectual Property Law (2010)
- Co-author, "Adopting Electronic Medical Records: What Do the New Federal Incentives Mean to Your Individual Physician Practice?" The Journal of Medical Practice Management, July/August 2009
- Co-author, "Electronic Health Records and Health Information Technology Under the New Federal Stimulus Act: How Are Healthcare Entities Affected?" Duane Morris Alert, March 3, 2009
- "Electronic Health Records: The Time for Implementation Is Now," Duane Morris Alert, January 29, 2009
- "Supreme Court Expands the Patent Exhaustion Doctrine," Duane Morris Alert, June 10, 2008
- Author, "Before You Sign on the Dotted Line: 15 Questions to Ask About Healthcare Software License Agreements," Modern Healthcare, February 2008
- Author, "Managing a Company's Agreements to Add Value to the Business", Corporate Counsel Edition, Legal Intelligencer, December 2002
- Author, "Data-Out", Continuing Legal Education materials for the Hot Topics in Privacy and E-Commerce Program sponsored by the Cyberspace and E-Commerce Committee, Philadelphia Bar Association, Philadelphia, Pennsylvania, July 30, 2002
Selected Speaking Engagements
- Speaker, "We're Going to Build a Wall (IP Monetization, including licensing and prosecution strategies)," Cardinal Intellectual Property, Keystone, Colorado, December 10, 2016
- Speaker, "Healthcare Data Security & Privacy Super Panel," 4A Healthcare Data Security & Privacy Symposium, October 5, 2016
- Panelist, "Drafting Software Agreement Warranty, Limitation of Liability and Indemnification Provisions," Strafford Webinar, May 11, 2016
- Speaker, "4A Healthcare Data Security & Privacy Symposium 2015," Duane Morris, Philadelphia, PA, October 22, 2015
- Speaker, "Structuring Software and Technology Reseller and Distributor Agreements," Strafford Webinar, September 17, 2013
- Panelist, "Managing IP in Complex Deal Structures," CoDev 2012, La Jolla, California, February 15, 2012
- Panelist, "CoDev 2012 Sneak Preview," Online Webinar, January 17, 2012
- Speaker, "I Health and Health IT (HIT)," ITechLaw Annual European Conference, Brussels, Belgium, November 6, 2009
- Speaker, "Defining, Protecting and Litigating Trade Secrets," roundtable discussion, May 22, 2008
- Panelist, "Licensing and Partnering," Topic for Establishing an Electronic Commerce Business, Law Class, Villanova University School of Law, Villanova, Pennsylvania, March 17, 2005, March 18, 2004, March 13, 2003, March 15, 2001 and March 28, 2000
- Panelist, "How to Grow Your Business," 7th Annual Wharton Entrepreneurship Conference, Philadelphia, Pennsylvania, November 21, 2003
- Speaker, "Considerations with Respect to the Collection and Transfer of Consumers' Data," Topic for the Duane Morris LLP Corporate Department Training Program with CLE credit given from the Insurance Society of Philadelphia, September 25, 2003
- Panelist, "Legal Issues for Entrepreneurs," 6th Annual Wharton Entrepreneurship Conference, Philadelphia, Pennsylvania, December 6, 2002