Expert Details

Expert in Patent Office Policy, Practice and Procedure

Expert ID: 734992 Virginia, USA

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Expert is the former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and Trademark Office. He has more than 48 years of expertise in intellectual property rights protection and 27 years of organizational management and leadership experience. He was appointed to his former position in March 2000 and has served in a similar capacity since November 1994, under the position's prior title, "Deputy Assistant Commissioner for Patent Policy and Projects." Previously, beginning in July 1989, Expert served as Deputy Assistant Commissioner for Patents. He participated in the establishment of patent policy for the various Patent Organizations under the Commissioner for Patents, including changes in patent practice, revision of rules of practice and procedures, establishment of examining priorities and classification of technological arts, and oversaw the operations of the Office of Patent Legal Administration, Patent Cooperation Treaty Legal Administration, and the Office of Petitions.

Additionally, in 1993, Expert was designated by the Secretary of Commerce to perform the functions of the Assistant Commissioner for Patents on an acting basis until a new Assistant Commissioner for Patents was appointed in 1994.

Expert joined the Patent and Trademark Office (PTO) as a patent examiner in June of 1970. In March of 1977, he became a Senior Examiner in a technology of master's level complexity. He became Director of the Manufacturing Group in May of 1983. When a new Electrical Communications examining group (Group 260) was formed in April of 1984, he became its first Group Director.

Expert assumed many leadership roles for the Office, including chairing the Patent Examiner Evaluation Board and the Patent Academy Curriculum Committee. Among his responsibilities, in addition to overseeing the Patent Examination Policy activities, he served on the USPTO Management Council, the USPTO Committee on Discipline, and the USPTO Executive Committee. He also coordinated several of the Trilateral Projects under the jurisdiction of the Commissioner for Patents. He has been a guest lecturer at a number of prestigious law schools.

Expert, as a Partner, serves as a patent consultant who advises clients on patent prosecution and patent post-grant matters, such as inter alia, subject matter eligibility, utility, restriction practice, inventorship, double patenting, petitions, declarations, reissue, reexamination and AIA trials as well as U.S. Patent & Trademark Office policy, practice and procedures matters. He also serves as an expert witness on patent law, policy, practice and procedure. He also served from 2005-2017 as the Intellectual Property L.L.M. and J.D. Programs Director at the Antonin Scalia School of Law at George Mason University where he was an adjunct professor who taught patent law and intellectual property law classes. He is frequently sought out to lecture to external groups on USPTO administrative trials and USPTO patent prosecution practice.

Education

Year Degree Subject Institution
Year: 1970 Degree: B.S. with Honors Subject: Electrical Engineering Institution: Washington University
Year: 1975 Degree: Juris Doctor degree with Honors Subject: National Law Institution: George Washington University

Work History

Years Employer Title Department Responsibilities
Years: 2018 to Present Employer: Undisclosed Title: Partner Department: Responsibilities: Specializes in all areas of patent practice. His expertise includes post-issuance proceedings at the United States Patent Office, opinions of counsel, advising attorneys and our clients on complex patent prosecution matters, patent litigation strategy, and United States Patent Office patent policy, practice and procedure, for which he is highly sought after f testimony. He has vast experience in providing lectures on recent US patent law developments across the USA, Europe and the Far East. He has more than 48 years of experience in the patent profession.
Years: 2004 to 2018 Employer: Oblon Title: Partner Department: Responsibilities: Expert is former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and Trademark Office. He has more than 45 years of expertise in intellectual property rights protection and 24 years of organizational management and leadership experience.
As a Partner, he serves as a patent consultant who advises clients on patent prosecution and policy matters and USPTO administrative trials. He also serves as a patent expert witness on patent law, policy, practice and procedure having testified in eleven trials and an arbitration. He has been an expert witness in nearly 100 cases.
He served from 2005-2017 as the Intellectual Property L.L.M. and J.D. Programs Director at the George Mason School of Law where he is an adjunct professor who teaches patent law and intellectual property law classes.
Years: 2004 to 2018 Employer: Oblon Title: General Counsel Department: Responsibilities: Oversees the firm's risk management and professional liability insurance carrier relations programs.
Years: 2005 to 2017 Employer: George Mason University- Antonin Scalia Law School Title: Director of the JD and LLM IP Law Programs Department: Responsibilities: Counseled students who are entered in the patent law track at the law school as well as taught patent law and intellectual property law classes.
Years: 1994 to 2004 Employer: USPTO Title: Deputy Commissioner for Patent Examination Policy Department: Responsibilities: Oversaw the patent examination policy, practice and procedure programs including rule making, the MPEP, examination guidelines and petitions. His expertise includes dealing with issues such as the duty of disclosure, PCT practice, prosecution laches, restriction and double patenting, patent term, subject matter eligibility, utility, non-obviousness, reissue, reexamination and certificates of correction.

Career Accomplishments

Associations / Societies
Memberships:
Expert has served on the Editorial Board of the AIPLA Quarterly Law Journal and as an Advisory Committee Member for CASRIP (The Center for the Advanced Studies and Research on Intellectual Property) at the University of Washington’s School of Law in Seattle, Washington. He was a Vice-Chair of the IPO U.S. Patent Practice Committee and was the Vice-Chair of the IPO Patent Law Committee, a former member of the AIPLA’s Industry Trilateral Working Group and a member of the Community Patent Review Advisory Board. He was a member of the IP Law 360 Editorial Advisory Board. He is also a member of the LES (Licensing Executives Society), the PTOS (Patent and Trademark Office Society), the AIPLA (American Intellectual Property Law Association), the Federal Circuit Bar Association, the ABA (American Bar Association) and the Giles S. Rich American Inn of Court. He is also a member of the Virginia State Bar and the bars of the Court of Appeals for the Federal Circuit and Supreme Court of the United States. He is registered to practice as a patent attorney before the U.S. Patent and Trademark Office. He was the Vice Chair of the AIPLA Patent Cooperation Treaty Committee and currently serves as a member of the AIA Strategic Task Force and its Post-Grant Practice Committee. He is a member of the IPO’s Post-Grant Practice Committee and the ABA, IPL Section Patent Law Committee. He was a member of the AIPLA Committee on Nominations.
Professional Appointments
He is a graduate of the Harvard University Kennedy School of Government SMG Program.
Awards / Recognition
Awards:
Expert received numerous awards during his career at the USPTO, including four Gold Medals, four Silver Medals and a Bronze medal from the Department of Commerce, a USPTO Career Achievement Award and the Vice President's Reinventing Government Hammer Award. He was named by Intellectual Property Today magazine as one of the most influential people in IP law and was the recipient of the Meritorious Executive Presidential Rank Award. In the issue of the Practicing Law Company's magazine "Global Counsel" he was named as one of the most inspiring regulators in the federal government. He received the IPO Leadership Award. He received the 34th Annual Dr. Joseph Rossman Memorial Award from the Journal of the U.S. Patent and Trademark Office Society. He was ranked by Chambers USA as one of the top Intellectual Property Lawyers. He was selected by his peers for inclusion in The Best Lawyers in America® in the specialty of Intellectual Property Law. He was selected by his peers for inclusion in The Best Lawyers in America® in the specialty of Intellectual Property Law. He was named in Washington D.C.'s Best Lawyer's List. He was listed as the Top Patent Prosecutor in the Patent Research Review. He was selected by his peers for inclusion in the Best Lawyers in America® for the area of Patent Law. He has been recognized in The Legal 500 as one of the top patent lawyers. He was selected by his peers for inclusion in the Best Lawyers in America® in the area of Patent Law. He has been named as one of the areas top patent attorneys in the listing of the Legal 500. He is recognized as a key intellectual property attorney in the state of Virginia in the Chambers USA. He is recommended in the IAM Patent 1000 as an individual practitioner in post-grant procedures. He was nominated by his peers and endorsed by the AIPLA Board of Directors to become a member of the AIPLA Fellows. He was selected by his peers for inclusion in the Best Lawyers in America® in the area of Patent Law. Expert was awarded the P.J. Federico Memorial Award by the U.S. Patent and Trademark Office Society. He was selected by his peers for inclusion in the Edition of The Best Lawyers in America. He is listed as ranked Virginia Intellectual Property attorney in the edition of Chambers USA. He is listed in the IAM 1000 national and DC Metro ranking. He is listed as a leading IP lawyer in the United States in the IP Stars. He has been selected by his peers to be included in the 20th Edition of The Best Lawyers in America in the practice area of Patent Law. He has been ranked by IAM 1000 as a top patent attorney. He has been selected to appear in the Second Edition of IP Stars from Managing IP (MIP) magazine. He is listed as ranked Virginia Intellectual Property attorney in the edition of Chambers USA.

Fields of Expertise

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