Daniel Scales' practice focuses on technology transactions and the strategic development, management and protection of intellectual property portfolios, with an emphasis on domestic and international trademark portfolios.
Technology Transactions: drafting and negotiating all types of technology-related transactions, including intellectual property licenses and transfers, service agreements, intellectual property asset sales, distribution and channel agreements and strategic alliances.
Corporate Transactions: advising clients on intellectual property aspects of mergers and acquisitions, as well as venture capital and private equity investments, with a particular focus on intellectual property due diligence and open source compliance issues.
Intellectual Property Counseling: advising companies on all aspects of intellectual property protection and asset management.
Trademark Prosecution: search and clear new trademarks; file and prosecute trademark applications.
IP Counsel, Avid Technology, Inc.: advised Avid on all types of commercial transactions relating to intellectual property, including software licensing, patent licensing, and Internet and marketing matters; served as Avid’s trademark counsel, advising the company on all clearance and prosecution matters and disputes; advised the company on all aspects of its global rebranding; managed a patent licensing program for a standardized video compression technology; negotiated international technology licenses and OEM agreements; developed and implemented marketing and technology-related policies.
- Negotiated mission-critical software reseller agreement.
- Performed open source diligence and analysis on software company that was sold for $180 million.
- Negotiated off-shore software development agreement for telecommunications equipment company.
- Implemented business plan for financial services company through series of customer and services agreements.
- Advised numerous private equity clients on intellectual property matters related to their investments in software, entertainment, consumer goods and healthcare services companies.
Publications and Presentations
“Open Source, Issues and Opportunities,” speaker, Practising Law Institute, New York, October 2011.
Professional and Community Involvement
Mr. Scales is a member of the Boston and Massachusetts Bar Associations. He is also a member of the International Trademark Association. Mr. Scales previously served on a Free Software Foundation Discussion Committee responsible for reviewing comments on Version 3 of the General Public License.
Education & Credentials
- Boston College Law School
- JD, 2003, cum laude
- Yale University
- BA, 1997
U.S. District Court, Massachusetts
Choate advised longtime client Mainsail Partners in its equity investment in PestRoutes, a Texas-based provider of business management software for the pest control industry