PROSECUTION

Preparation and prosecution of utility and design patent applications, both in the United States and abroad, to obtain strategic and strong, enforceable patents has represented a significant portion of my practice for over 17 years. I have experience across a wide range of industries, including: medical devices; healthcare; instrumentation; electrical and electronic engineering; software; optics; imaging; radar; automotive; digital media and telecommunications; life sciences; in vitro diagnostics; microfluidics; next generation sequencing; green technology; internet; e-commerce; encryption; and retail and consumer products.

I’ve provided prosecution services to many small and mid-sized companies that do not have in-house patent staff sufficient to handle the workload, as well as large corporate and institutional clients that have specialized technical needs and/or critical timing requirements. My prosecution skills have been honed by years of experience in mining value and monetizing through enforcement the patents in the portfolios of my clients.

STRATEGY

I have significant experience in providing opinions relating to patentability, freedom-to-operate, validity and infringement enforceability of patents. In addition, in my roles as an in-house patent attorney, I managed a program dealing with invention award, invention review and invention prosecution.  I’ve also helped evaluate the strengths and weaknesses of patent portfolios of clients, as well as their competitors and acquisition targets (IP diligence support.)  The object of such counseling and opinion efforts is to spend IP resources wisely to maximize return on investment while minimizing risk, to avoid conflicts where possible, and to resolve disputes in a fair and cost-effective manner.

Tasks such as above typically involve review of complex prosecution histories, prior art, and specifications and/or operation of products being marketed or in development, assessment of invention conception and inventorship, the potential use of inter partes and ex parte re-examination proceedings (and/or similar foreign patent office proceedings), reissue applications, and discussions with clients regarding their business objectives.  The Leahy-Smith America Invents Act of 2011 dramatically expanded the opportunities to either challenge or strengthen the validity of patents at the USPTO, offering less costly, streamlined alternatives to district court litigation. The new procedures provide faster approaches to invalidate patents, as well as strategic tools to limit and define issues before or during patent litigation and to promote settlements. My experience extends to both offensive and defensive reexamination counseling and prosecution.

LICENSING/MONETIZATION

Businesses, universities and research institutions frequently use licensing and other technology transactions to commercialize and maximize the value of their technology and IP assets and investments. IP plays a significant role in business agreements that are essential to the viability and growth to many companies.  My background includes six years drafting and negotiating licenses and tech transfer agreements as in-house IP licensing counsel for a global life sciences instrumentation leader, and assisting another client in bringing to fruition its first digital media codec patent licensing program.

I have helped clients to mine and to perform due diligence assessments of their patent portfolios and related IP assets for the purposes of licensing and/or selling selected portions of the portfolios, to enter into strategic arrangements such as joint ventures, collaboration agreements, research and development agreements, marketing and distribution agreements, manufacturing and supply agreements, and other commercial transactions with third parties, and to develop new commercial opportunities for those assets. I can similarly help your organization navigate and/or structure licenses and commercial agreements, guided by your strategic and operational goals.