Expert Details
Patent Law and Patent Prosecution, Especially of Mechanical, Electrical and Manufacturing Inventions
ID: 725495
Pennsylvania, USA
Expert obtained U.S. patents for a measuring instrument on behalf of a small business engaged in the manufacture of machined parts for the automobile industry. He also oversaw the filing of foreign patent applications in several foreign countries. He prepared distribution agreements for the measuring instrument. The measuring instrument currently is on sale throughout the U.S. and in countries around the world. Sale of the patented invention is helping to free the small business from a dependence on contract manufacturing. Expert prepared patent applications on behalf of two established U.S. government defense contractors for several different national defense-related inventions. The pending patent applications assist the contractors in securing and maintaining government contracts.Expert submitted patent applications for a beverage dispensing system on behalf of an individual inventor-entrepreneur. The issued patent and patent applications assisted the inventor in starting a business installing and supplying the beverage dispensing system in restaurants and nightclubs. The invention is currently operating and the inventor has received large orders from a familiar national beverage manufacturer and a national beverage distributor.Expert prepared a patent application for a computerized medical device on behalf of a start-up business. The start-up business has obtained financial backing, completed product development and placed the medical device on the market. Expert prepared several provisional (temporary) patent applications for consumer products to provide the inventors with relatively low-cost protection for their inventions while the inventors engage in product development and explored marketability of their inventions.
Education
| Year | Degree | Subject | Institution |
|---|---|---|---|
| Year: 1974 | Degree: BS | Subject: Mechanical Engineering | Institution: University of Kentucky |
| Year: 1977 | Degree: JD | Subject: Law | Institution: University of Kentucky |
Work History
| Years | Employer | Title | Department |
|---|---|---|---|
| Years: 1998 to Present | Employer: Undisclosed | Title: Attorney/Owner | Department: |
Responsibilities:Expert is a patent Attorney in private practice. He is licensed by the U.S. Patent and Tradmark Office. He provides a wide range of patent law services, including patent application preparation, prosecution, negotiation and enforcement. |
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| Years | Employer | Title | Department |
| Years: 1998 to Present | Employer: Undisclosed | Title: Counsel | Department: |
Responsibilities:Expert is counsel on patent matters to Lipton, Weinberger and Husick, an intellectual property boutique law firm. Expert works with the firm's patent clients on matters relating to a variety of technologies, ranging from helicopter control systems to computer-operated medical devices. |
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| Years | Employer | Title | Department |
| Years: 1998 to Present | Employer: Undisclosed | Title: Counsel | Department: Environmental |
Responsibilities:Expert is counsel in environmental matters to Drinker, Biddle and Reath, a top 100 law firm. |
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| Years | Employer | Title | Department |
| Years: 1996 to 1998 | Employer: Drinker, Biddle & Reath LLC | Title: Attorney | Department: Environmental |
Responsibilities:Expert worked in the environmental practice group of Drinker, Biddle and Reath, a top 100 law firm. Clients included local governments, utilities and waste disposal facility operators. |
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| Years | Employer | Title | Department |
| Years: 1989 to 1996 | Employer: Cohen, Shapiro, Shiekman & Cohen | Title: Attorney | Department: Environmental |
Responsibilities:Expert worked in the environmental department of Cohen, Shapiro, a Philadelphia regional law firm. Clients included governments, landfill operators and manufacturers. The environmental department moved as a group to Drinker, Biddle and Reath in 1996. |
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| Years | Employer | Title | Department |
| Years: 1977 to 1989 | Employer: Kentucky Natural Resources and Environmental Protection Cabinet | Title: Attorney - Branch Manager | Department: Office of General Counsel |
Responsibilities:Expert worked as an attorney enforcing environmental laws and defending state programs for the Kentucky NREPC. He later served as branch manager coordinating the work of attorneys working to control air, water and waste. |
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Government Experience
| Years | Agency | Role | Description |
|---|---|---|---|
| Years: 1977 to 1989 | Agency: Kentucky Natural Resources and Environmental Protection Cabinet | Role: Attorny/Branch Manager | Description: Expert enforced environmental laws and defended state environmental programs for the Commonwealth, particularly relating to air pollution, water pollution, and waste disposal. |
| Years: 1985 to 2003 | Agency: County of Delaware, Pennsylvania | Role: Attorney | Description: Expert acted as a private lawyer and successfully defended the County of Delaware, Pennsylvania, from a major environmental challenge to the County's landfill. Expert also successfully represented the County concerning environmental issues surrounding the County's prison. |
International Experience
| Years | Country / Region | Summary |
|---|---|---|
| Years: 2006 to 2008 | Country / Region: China | Summary: Expert located and supervised Chinese patent agents for patent filings in China. |
| Years: 2006 to Present | Country / Region: India | Summary: Expert located and oversaw Indian patent agents for patent filings in India. |
| Years: 2006 to 2007 | Country / Region: Mexico | Summary: Expert located and oversaw Mexican patent agents for patent filings in Mexico. |
| Years: 2003 to Present | Country / Region: Canada | Summary: Expert located and oversaw Canadian patent agents for patent filings in Canada. |
| Years: 2003 to Present | Country / Region: European Patent Office | Summary: Expert located and oversaw European patent agents for patent filings in the European Patent Office. |
Career Accomplishments
| Associations / Societies |
|---|
| Delaware County Bar Association Pennsylvania Intellectual Property Forum American Intellectual Property Law Association |
| Licenses / Certifications |
|---|
| Licensed to practice law in Kentucky and Pennsylvania Registered Patent Attorney with the United States Patent and Trademark Office |
| Professional Appointments |
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| Chairman, Pennsylvania Intellectual Property Forum, 1998 to the present Chairman, Intellectual Property Committee, Delaware County Bar Association, 2002 Legislation Co-Chairman, Environmental Law Committee, Philadelphia Bar Association, 2000-2001 |
| Publications and Patents Summary |
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| He has seven recent articles on patent law and six on environmental law. |
Additional Experience
| Training / Seminars |
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| See the publications page at www.yarbroughlaw.com. Each publication is a seminar delivered. The list includes: 1. Appeal of Patent Claim Rejections 2. Enforcing Design Patents 3. Patent Licensing of Future Inventions 4. Trade Secrets in Pennsylvania 5. Indirect Infringement of Copyright 6. Patent Reexamination 7. Protection of Trade Dress 8. Supreme Court Jurisprudence on the Doctrine of Equivalents |
| Vendor Selection |
|---|
| Expert can assist in locating foreign patent attorneys for foreign patent protection. He can assist in locating attorneys for patent enforcement or validity litigation. He can locate attorneys for patent prosecution in technical disciplines that Expert may not address, such as pharmaceuticals. |
Fields of Expertise
canons of claim construction, claim (patent), device inventing, device patent, device patenting, direct infringement, Doctrine of Equivalents, electrical device patenting, electromechanical device, electromechanical device patenting, literal infringement, patent, patent claim construction, patent infringement, patent law, patent prosecution, patent specification, patentability evaluation, process inventing, United States patent, contributory infringement, defensive patenting, trade secret law, trade secret, European patent, intellectual property, inventions, foreign patent, legal patenting