Zayd Alathari

Partner
Norton Rose Fulbright US LLP

M:+971 50 196 3136

Dubai
United Arab Emirates
T:971 4 369 6300
Dubai
United Arab Emirates
T:971 4 369 6300

M:+971 50 196 3136

Zayd Alathari

Zayd Alathari

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Biography

Zayd Alathari is a highly-experienced intellectual property lawyer based in our Dubai office. He focuses on all aspects of intellectual property law, including:

  • supporting and developing IP strategy, capacity building and infrastructure, including policies, procedures, guidelines, workflows and best practices
  • leading, coordinating and handling local content and joint venture deals in Saudi Arabia with a variety of legal aspects,
  • handling, drafting and negotiating a wide variety of IP and technology transactions and deals,
  • conducting due diligence and freedom to practice, and risk mitigation,
  • managing and advising on patent, trademark, trade secret, copyright portfolios and matters,
  • drafting and prosecuting patent applications,
  • advising on IP commercialisation and dispute resolution,
  • advising on data protection, digitalisation, IT and organisational transformation efforts,
  • establishing, reviewing and enhancing policies and procedures, and
  • other IP counselling.

Before joining Norton Rose Fulbright US LLP, Alathari worked at Saudi Basic Industries Corporation (SABIC), where he helped develop and lead the company's IP initiatives as its Senior Manager & IP Counsel in the Middle East and Africa. In over eight years at SABIC, Alathari led a team that supported SABIC's Middle East and Africa manufacturing teams and the company's global technology & innovation teams for the chemical, agri-nutrients and metal business in the US, Europe, Middle East, China and India. He was also the legal focal point for a variety of organizations, including Local Content, Digitalization, Engineering & Project Management and Information Technology.

At SABIC, he helped develop and implement SABIC's global IP strategies and policies, and he provided legal and IP advice and contract support to protect and enhance the value of the company's technology. Additionally, Alathari and his team drafted and negotiated a wide range of technology agreements; prepared and prosecuted patent applications; managed and maintained patent portfolios; conducted due diligence; and handled freedom to operate (FTO) opinions.

Before his in-house career in Saudi Arabia, Alathari practiced at a major US law firm in Washington, DC. As an associate and registered patent attorney, he advised US-based and international clients on IP litigation, transaction and patent prosecution matters.

Professional experience

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JD, Washington College of Law, American University, 2003
MS, Biotechnology, The Johns Hopkins University, 1999
BS, Biology, George Washington University, 1996                                                                                                                                           

  • District of Columbia Bar
  • US Patent and Trademark Attorney
  • Virginia State Bar

General experience

  • Assisted small and large clients, domestic and foreign, in patenting, protecting and commercializing inventions in the areas of petrochemicals, metals and fertilizers, chemical and biotechnology products, medical devices, pharmaceuticals, coatings, mechanical devices and business methods, in both domestic and foreign venues.
  • Managed  patent  portfolios,  supervised  and  delegated  work  between  team  of  attorneys  and  support  staff.
  • Prosecuted patent applications, prepared opinions, and assisted with litigation and transactional matters.

Portfolio management

  • Directly managed several client portfolios ranging in the thousands of active cases
  • Communicated with and counselled clients regarding worldwide portfolio management and strategic development
  • Conducted regularly scheduled discussions with in-house general counsel, management, and scientists to render decisions  on patent prosecution strategies and prepared yearly budget estimates;
  • coordinated and directed prosecution, communication and work assignments between client and a legal team of partners, associates, legal assistants and paralegals.

Patent prosecution

  • Fully drafted and prosecuted over thousands of patent applications world-wide
  • Extensive experience with US and PCT filing and practice
  • Well experienced with Australia, Canada, China, Europe, GCC, Japan, Mexico, Middle East, New Zealand, Saudi, Singapore and South Africa patent practice, and familiar with other jurisdictions.

Litigation work, due diligence, opinion and transactional

  • For a number of clients, and coordinated a team of attorneys focusing on local content deals in Saudi Arabia.  The team assisted companies with drafting, reviewing and negotiating shareholder, share sale, financial (including conventional and Islamic, and SIDF), commercial, marketing, supply/feedstock, off-take, technology licensing, real estate, front-end engineering (FEED/FEL), and construction (including build-only, D&B and EPC arrangements) agreements; conducting technical and commercial legal and IP due diligence, advised company; advising on a variety of matters, including project structuring, construction and operational strategy, corporate structuring,  joint venture set up, technology, financing (e.g., SIDF funding), licensing requirements (e.g., MISA), exit strategy (IPO, selling shares, call/put-option), etc.
  • Prepared, drafted, reviewed and negotiated non-disclosure agreements, collaboration/joint development agreements, technical service agreements, license agreements and other technology agreements.
  • Conducted due diligence and opinion work by reviewing claims of patents, published patent applications, and file histories, and provided opinions, preliminary analysis memoranda, and preliminary oral presentations for  validity, infringement, freedom-to-operate, and patentability.
  • Assisted the patent litigation matters, including performing legal and technical research, conducting prior art searches, reviewing file histories and developing litigation theories.
  • Assisted small and large clients, domestic and foreign, in patenting, protecting and commercializing inventions in the areas of petrochemicals, metals and fertilizers, chemical and biotechnology products, medical devices, pharmaceuticals, coatings, mechanical devices and business methods, in both domestic and foreign venues.
  • Member, Research & Innovation (R&I) Committee, Gulf Petrochemical and Chemical Association (GPCA), Dubai, United Arab Emirates
  • Legal liaison and member of Arts, Culture, Media and Entertainment (ACME) Committee, American Chamber of Commerce, Saudi Arabia (AmChamKSA)
  • Speaker, Presenter and Organizer for IP and the Middle East topics, mainly in conjunction with the US State Department and the Commercial Law Development Program, US Department of Commerce.

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