John M. Neclerio

Partner

  • John M. Neclerio
  • Phone: +1 215 979 1382

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  • Duane Morris LLP
    30 South 17th Street
    Philadelphia, PA 19103-4196
    USA

John M. Neclerio is chair of the firm's Technology Transactions, Licensing and Commercial Contracts Group and a member of the firm’s multi-disciplinary AI 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, including contracting and licensing advice regarding cognitive technologies, such as machine learning and artificial intelligence, other emerging technologies, data analytics and big data, and privacy and data security.

Mr. Neclerio regularly provides general business representation to, software and software as a service, consulting, Internet, e-commerce and other technology companies, and provides counsel to entities that are licensing or acquiring software or technology related products or services, including strategic advice with respect to agreements to implement 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 issues regarding joint ownership rights, but has extensive commercial contracting experience. Mr. Neclerio is often an attorney at the firm that his colleagues call upon to handle large scale commercial agreement negotiations for clients with agreements involving intellectual property issues and the sale of products and particularly where a company is negotiating with a larger company or the contract involves a company’s intellectual property assets and/or is otherwise strategically important for the company’s business. Over the course of his 20 plus year career as a technology transactions attorney, Mr. Neclerio has gained experience negotiating with in-house legal departments of hundreds of large and well recognized corporations, and has also worked with many companies setting strategy for their approach in contract negotiations.

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.

He also works on agreements for fintech companies, including merchant processing agreements, and works with several education technology companies.

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:

Mr. Neclerio frequently advises clients regarding contracts for Web site development and ISP, ASP and hosting arrangements, online sales, click-wrap or browse-wrap licenses, website media and content licensing agreements, private labeling, co-branding and other on-line marketing and distribution strategies and agreements, on-line advertising, ad-share agreements and sponsorship agreements, Internet exchanges, e-commerce marketplace issues and other B2B or B2C issues and agreements, e-payment systems, Web site linking issues, website terms of use and on-line privacy and security policies and DMCA requirements and notices. As a member of the firm's Intellectual Property Practice Group, Mr. Neclerio frequently advises clients on copyright issues and has addressed issues regarding doing business in the 3D Internet environment.

Data Privacy and Security:

Mr. Neclerio has experience with issues regarding the collection, retention, use and protection of personally identifiable or confidential information and is knowledgeable about, and counsels clients on, US privacy and security laws, including federal (such as HIPAA, GLBA/Safeguards Rule, SOX, CAN-SPAM, Do-Not-Call, Computer Fraud and Abuse Act, Red Flag Rules) and state (CCPA/CPRA and other state privacy laws, breach notification, personal information protections acts and related statutes), and EU (GDPR) and Canadian privacy laws (PIPEDA). 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.

Data Licensing and Big Data and Data Analytics:

Mr. Neclerio often advises clients with regard to analytics platforms, data licensing, data collection in agreements, and rights in data.   He has advised companies in various industries with regard to these issues, including healthcare, financial services and education.  

Artificial Intelligence and Emerging Technology:

Mr. Neclerio has advised clients with regard to contract issues having to do with cognitive technologies such as natural language processing, machine learning, and artificial intelligence and other emerging technology issues such as wearable technology, drones, autonomous and electric vehicles, robotics and manufacturing processes, bots technology and AI chatbots.  He is often consulted by clients that are developing agreements addressing their technology offerings and/or are having to address complex intellectual property issues in their agreements with regard to new and emerging technology.     

Article 2:

Mr. Neclerio works with global and national sourcing organizations for companies that are developing terms and conditions, purchase orders and other documents for the sale or purchase of products under Article 2 of the Uniform Commercial Code.  

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.

Representative Matters

  • Serving as intellectual property counsel to leading online sportsbook Fanatics Betting and Gaming in its $225 million acquisition of the U.S. businesses of PointsBet USA.

  • Represented AgroFresh Solutions, Inc., a global leader in produce freshness solutions, in a strategic collaboration agreement with Zest Labs™, Inc., an AgTech company modernizing the post-harvest fresh food supply chain, whereby AgroFresh will incorporate Zest Labs' Zest Fresh™ software platform solution into its FreshCloud™ Transit Insights platform, a data backed insights driven solution for monitoring produce quality through the supply chain.

  • Represented one of the fastest growing health and wellness companies in the United States in a $100 million exclusive global license agreement with a leader in engineering and industrialization of biology. This collaboration will advance biosynthetic cannabinoid production to bring new cannabis products to market to efficiently meet growing and selective consumer demand while ensuring greater supply chain security.

  • 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 Verizon IT, a former subsidiary of Verizon Communications, Inc., offering data center outsourcing, help desk and remote backup and recovery services and licensing telecommunications software products to the commercial marketplace.

  • Represented Verizon Communications Inc. in negotiating and executing the various licensing and other agreements necessary for it to be able to spin off its local exchange and related business assets in 14 states to Frontier Communications Corp.

  • Represented Verizon Communications Inc. in negotiating and executing software consents for transition services necessary for it to be able to spin off its local exchange and related business assets in New England to FairPoint Communications, Inc.

  • Represented Verizon Communications Inc. in negotiating and executing software consents for transition services necessary for it to be able to spin off its directories business and related business assets to Idearc Media LLC.

  • Counsel to Verizon Communications, Inc. 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 a Fortune 20 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 a leading risk management software company in its negotiations with a Fortune 5 company purchasing its software solution, including issues regarding the company’s use of computer bots.

  • Counsel to a company licensing its leading edge natural language processing software to several customers.

  • Counsel to a company putting together its commercial agreements for its new annuity platform and assisting the company in its negotiations with several large Fortune 500 insurance companies.

  • Counsel to a consulting company leveraging the capabilities of GenAI for providing an automated platform for code scrubbing of claims in healthcare in the development of its customer services agreement.

  • Counsel to a leading credit ratings company with advice about its intellectual property and data licensing issues for its ESG business.

  • Counsel to a company in its negotiations with Ruby's Diner for a multi-city development agreement for Ruby's Diner franchises.

  • Counsel to Sands Casino Resort Bethlehem in its negotiations with Carnegie Deli and Emeril Lagasse for the development of restaurants at the property.

  • Counsel to a major supplier of Latin food products in the mid-west in its negotiations with a distributor of the products.

  • 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 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

Admissions

  • Pennsylvania
  • Florida
  • 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

Education

  • Emory University School of Law, J.D., 1994
  • Emory University, Goizueta Business School, M.B.A., 1994
  • Duke University, B.A., 1990

Experience

  • Duane Morris LLP
    - Partner, 2005-present
    - Associate, 1999-2005
  • Eckert Seamans Cherin & Mellott, LLC, Philadelphia, Pennsylvania
    - Associate, 1997-1999

Professional Activities

  • Pennsylvania Bar Association
  • Philadelphia Bar Association
  • The Florida Bar

Honors and Awards

No aspect of these rankings has been approved by the Supreme Court of New Jersey. Further information on methodologies is available via these links.

Selected Publications

Media Hits

Selected Speaking Engagements

  • Speaker, "Understanding Data Licensing in the World of AI," Duane Morris Webinar, December 18, 2024
  • Speaker, “Get Smart with AI: Strategic Contracting to Reduce Risk,” Duane Morris Webinar, November 15, 2023
  • Speaker, "GLBA, Data Privacy and Cybersecurity," Duane Morris Fintech General Counsel Roundtable, Webinar, December 2, 2022
  • Presenter, "Is There Professional Negligence in a Cybersecurity Contract Obligation?" Duane Morris LLP Webinar, December 2, 2021
  • Presenter, "What to Worry About for California Contracts," Duane Morris Commercial Contracts Checkup Series, Webinar, November 19, 2020
  • Presenter, "Up in Smoke: Common Provisions in Canna-Contracts That Could Blow Up a Deal," Duane Morris Commercial Contracts Checkup Series, Webinar, December 5, 2019

  • Moderator, "Preparing for the CCPA: Reviewing and Updating Privacy Policies and Agreements for Compliance," The California Consumer Privacy Act of 2018 Webinar Series, Duane Morris LLP, June 20, 2019

  • Moderator, “E-Signed, Sealed, Delivered” Duane Morris Commercial Contracts Checkup Series, Webinar, January 24, 2019

  • Presenter, “Blockchain Business Applications: Dot-Com Bust or Business Boom?” Duane Morris Commercial Contracts Checkup Series, Philadelphia and Webinar, October 11, 2018 (video replay) 

  • Presenter, "A Day on Contracts: Electronic and On-line Contracts," Pennsylvania Bar Institute, August 13, 2018

  • Presenter, “Are You Up-to-Date on Key Provisions and Confidential Information Protections in Term Sheets, MOUs and Letter Agreements?” Duane Morris Commercial Contracts Checkup Series, Webinar, June 21, 2018 (video replay)

  • Panelist, "Drafting Software Agreement Warranty, Limitation of Liability and Indemnification Provisions," Strafford Webinar, May 15, 2018

  • Panelist, "Negotiation Considerations," ACC Greater Philadelphia In-House Counsel Conference, Philadelphia, April 25, 2018

  • Panelist, "One Month to GDPR Enforcement: Final Preparations and Review," The General Data Protection Regulation (GDPR) Webinar Series, April 10, 2018 (video replay)

  • Speaker, "Open Source's Impact on Innovation," University of Pennsylvania Law School, Philadelphia, March 27, 2018

  • Panelist, "Individual Consent Requirements and Document/Agreement Updates," The General Data Protection Regulation (GDPR) Webinar Series, January 9, 2018 (video replay)

  • Panelist, "The Requirements of Data Mapping for U.S. Businesses," The General Data Protection Regulation (GDPR) Webinar Series, December 19, 2017 (video replay)

  • Panelist, "Six Months Before GDPR: Why GDPR Is Relevant to U.S. Businesses and How You Can Comply," The General Data Protection Regulation (GDPR) Webinar Series, November 30, 2017 (video replay)

  • Speaker, "Cyber Security and Global Data Privacy," Duane Morris, Deloitte and the Metropolitan Black Bar Association (MBBA), December 14, 2017

  • 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
  • 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
  • Speaker, "Creating a Web Site Privacy Policy and Negotiating Co-Marketing Agreements, Affiliate Program Agreements and Other Web Site Partnering Agreements," Hot Topics in Privacy and E-Commerce, program sponsored by the Cyberspace & E-Commerce Committee, Philadelphia Bar Association, Philadelphia, Pennsylvania, July 30, 2002