Overview
Matthew Wilmot focuses his practice on the representation of technology-based companies and clients in other industries having intellectual property assets.
Matthew’s clients include software companies and mobile app developers (including SaaS and cloud-based companies), as well as companies in the bioscience, agriculture, media and content distribution, footwear and apparel, and manufacturing and distribution industries. He regularly represents his clients on a broad range of technology and other related transactions both in the U.S. and internationally, including patent and technology licensing; software licensing; trademark, copyright, and content licensing; collaborations and consortia; research and development; technology transfer; and other transactions and agreements concerning the development, protection, commercialization, and use of intellectual property rights.
In addition to his transactional practice, Matthew also has a recognized trademark, trade dress, unfair competition, trade secret, copyright, domain name, and intellectual property litigation practice. He regularly assists clients with searching and clearing trademarks both domestically and internationally; prosecuting domestic and international trademark applications; developing and maintaining trademark portfolios; copyright and trademark advice and counseling; trade secret advice and counseling; domain name and website issues; intellectual property due diligence; entertainment, media and advertising law; and enforcing intellectual property rights both in state and federal courts, as well as before the USPTO’s Trademark Trial and Appeal Board.
Matthew also regularly advises clients on data privacy and security matters, including compliance and risk management.
Prior to joining Stoel Rives, Matthew led the Trademark, Copyright, and transactional IP practice group and the Technology Industry group for a prominent regional law firm.
Education
Willamette University College of Law, J.D., 2005, cum laude
Willamette University, B.A., 2001
Admissions
Oregon
California
United States District Courts for the District of Oregon and Southern District of California
Experience
- Representation of agriculture tech company on patent licensing and commercialization and distribution matters in connection with the development and sale of blueberry varieties in the U.S. and internationally.
- Representation of large outdoor apparel company in trademark, copyright, and IP transactional matters.
- Representation of bioscience companies in negotiating and drafting master service agreements relating to clinical trial support services and the development and commercialization of companion diagnostics.
- Representation of bioscience company in negotiating and drafting sponsored research agreement with internationally recognized research institution.
- Representation of computer-based training provider in the development and distribution of a SaaS-based learning management system.
- Representation of bicycle accessory company in structuring international product distribution strategy.
- Representation of Wi-Fi technology services company in enforcement of trade secret rights against former employee.
- Representation of heirs of music composer in negotiating and drafting publishing agreement with music publisher.
- Representation of hardware company in the development of a software development program to encourage the development of mobile applications to be used with company’s mobile phone accessory.
Insights
Insights & Presentations
- “Covid-19 and its Effect on Technology Companies: Legal Challenges and Opportunities During the Continued Global Pandemic,” Techlandia Magazine, Vol. 1, Issue 4, 2021/2022
- “How Companies are Employing Artificial Intelligence,” (co-author), Portland Business Journal, January 31, 2020
- “The Rising Importance of Artificial Intelligence for your Business” (co-author), Portland Business Journal, August 10, 2018
- Co-presenter, “Software and Data Use Agreements,” Business Attorney’s Guide to Information Technology, National Business Institute, October 24, 2017
- “Six Cities Are Heating Up in High-Tech Business & Legal Work” (quoted), Of Counsel Magazine, March 2017
- Speaker, “Best Practices in Negotiating and Drafting Software License,” Stoel Rives Business Attorney Training, November 17, 2016
- Speaker, “Negotiating IP Rights in Industry Sponsored Research Agreements,” Strafford Webinar, June 30, 2016
- Speaker, “Protecting Data Privacy Through Contracts,” Oregon State Bar Technology Law Section CLE, May 18, 2016
- Speaker, “Media Law: Avoiding Legal Minefields,” Statewide Editors Association Annual Meeting, August 3, 2015
- Speaker, “Structuring Trademark Licenses: Negotiating Scope, Quality Control, Territory and Other Key Provisions,” Strafford Webinar, April 14, 2015
- Speaker, “Trademark Opposition Proceedings,” Oregon State Bar Intellectual Property Section CLE, January 5, 2015
- Speaker, “Copyright Issues for Homeowners’ and Condominium Associations,” Community Association Institute—Oregon, November 14, 2014
Recognition
- Selected as one of “America’s Leading Lawyers for Business” (Oregon) by Chambers USA (Intellectual Property), 2019–present
- Listed in World Trademark Review’s WTR 1000 – the World’s Leading Trademark Professionals, 2023–present
- Listed among Rising Stars (Intellectual Property, Intellectual Property Litigation), Oregon Super Lawyers®, 2009, 2011–2015
Affiliations
Professional
- International Trademark Association, Member
- Intellectual Property Section, Oregon State Bar, Member
- Intellectual Property Section, State Bar of California, Member
- Multnomah Bar Association, Member
Civic
- Oregon Sports Authority, Board of Directors, 2015–present
- Economic Development for Central Oregon, Former Board of Directors