Electrical, Mechanical, and Computer Science Prosecution

Overview

Businesses today operate in a global marketplace of ideas in which protecting intellectual property isn’t simply a necessary defensive exercise, but a vital component of strategy that can define the efforts of an entire organization. Our Electrical, Mechanical, and Computer Software Prosecution team is comprised of more than 50 registered patent attorneys and agents, many of whom are recognized leaders in areas that include semiconductors, software, navigation systems, medical devices, aeronautics, and wireless communications and location technologies. Many of our team members hold advanced degrees in electrical, mechanical, and computer engineering fields and have worked in industry as engineers so they have a technical, as well as a legal understanding, of these industries.

Beyond our stellar track record in securing patent protection, our customized, big-picture management of intellectual property portfolios for a client roster that ranges from multinational companies, including 10 of the Fortune 25, to emerging businesses across numerous industries sets us apart from other law firms. By aligning the development of intellectual property (IP) rights with our clients’ overall business plan, we help clients fully understand the value of their patent portfolios and realize their full potential. We counsel clients on strategic use of intellectual property, including developing strategies for maximizing a client's intellectual property in a given market, as well as patent preparation and prosecution.

We meet with research and development personnel during the development of new products and technologies to help identify subject matter that can be patented, cultivate a strategy for protecting the client’s intellectual property, and determine applications that are positioned to have the greatest value by employing a combination of patent, trademark, copyright, and trade secret strategies. As a result, when challenges arise, we meet them from a vantage point of deep knowledge and understanding.

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We routinely partner with a wide network of international IP firms to help clients secure patents in Europe, the United Kingdom, Japan, China, Korea, Latin America, and other countries around the world. As our clients increasingly do business worldwide, foreign patents have become crucial to protecting their assets and increasing their market share and profit margins. In addition, we use sophisticated tools to conduct an ongoing cost-benefit analysis to assist our clients in deciding which foreign patents to maintain.

Our group includes some of the leading post-grant practitioners in the country, having successfully prosecuted hundreds of ex parte and inter partes reexaminations and interferences prior to enactment of the America Invents Act, and now one of the leading filers of inter partes reviews and covered business method patent reviews under the America Invents Act.

Electrical

Our electrical patent attorneys have prosecuted patents in technologies ranging from automotive diagnostic test equipment to z-wave home automation devices and everything in between. We represent firms that develop and market electronic products and services, including cable communications, internet backbone equipment, computer hardware, semiconductor mask repair technologies, peripheral devices, magnetic media, instrumentation, electrical production equipment, electrical medical devices, electrical consumer products, telecommunication devices, electrical connectors, and a broad range of industrial products.

Mechanical

We have a deep bench of mechanical patent attorneys who regularly assist our clients in obtaining both utility and design patent protection for their mechanical inventions. Our experience spans the very largest devices, such as construction equipment, to the very smallest, with a particular focus in nanotechnologies. Our experience cuts across all industries, with attorneys working in fields as disparate as medical devices and oil well drilling.

Computer Software

Building a useful patent portfolio, particularly in the rapidly-changing computer field, begins with identifying a client's business goals and tailoring a patent strategy to fit those goals. Whether in underground utility locating equipment or large scale remote access servers, software is the core of many of our clients’ businesses and our attorneys are well-versed in protecting software innovations. In addition to Internet and software-related inventions, our attorneys assist clients in obtaining business method patents in the insurance and banking fields.

Our firm's attorneys also assist clients in licensing transactions to monetize their own intellectual property assets, as well as to obtain rights from third parties. We evaluate computer-related products and intellectual property portfolios to help clients enter licensing negotiations with a true understanding of their position. Some of the areas we have worked in include: digital rights management, operating systems, compilers, and Internet-based services.

Professionals

Name Title Office Email
Partner Washington, D.C.
Patent Attorney Cincinnati
Partner Philadelphia
Associate Denver
Associate Philadelphia
Associate Seattle
Partner Seattle
Patent Attorney Philadelphia
Partner Cleveland
Partner Atlanta
Counsel Atlanta
Partner Washington, D.C.
Associate Seattle
Associate Philadelphia
Partner Philadelphia
Associate Columbus
Patent Attorney Atlanta
Partner Philadelphia
Associate Cincinnati
Of Counsel Philadelphia
Partner Philadelphia
Patent Attorney Philadelphia
Patent Agent Washington, D.C.
Patent Attorney Atlanta
Associate Atlanta
Partner Washington, D.C.
Associate Philadelphia
Associate Atlanta
Staff Attorney Washington, D.C.
Associate Philadelphia
Partner Philadelphia
Associate Philadelphia
Partner Cincinnati
Associate Washington, D.C.
Associate Philadelphia
Patent Attorney Cleveland
Partner Washington, D.C.
Associate Seattle
Partner Philadelphia
Partner Philadelphia
Counsel Chicago
Partner Philadelphia
Associate Seattle
Partner Washington, D.C.
Patent Attorney Philadelphia
Partner Seattle
Associate Seattle
Associate Atlanta
Associate Washington, D.C.
Patent Attorney Denver

Recognition

  • Chambers USA
    • Intellectual Property ‒ Ohio (2011 to 2020)
    • Intellectual Property ‒ Georgia (2017 to 2020)
    • Intellectual Property ‒ Pennsylvania (2007 to 2020)
    • Intellectual Property: Litigation ‒ District of Columbia (2015 to 2019)
    • Intellectual Property: Patent Prosecution ‒ District of Columbia (2015 to 2019)
    • Intellectual Property: Trademark & Copyright ‒ New York (2014 to 2020)
  • The Legal 500 United States
    • Intellectual Property – Copyright (2015 to 2020)
    • Intellectual Property – Patent Litigation: Full Coverage (2015 to 2020)
    • Intellectual Property – Patents: Prosecution (Including Re-Examination and Post-Grant Proceedings) (2015 to 2020)
    • Intellectual property – Trade Secrets (Litigation and Non-Contentious Matters) (2017 to 2020)
    • Intellectual property – Trademarks: Non-Contentious (Including Prosecution, Portfolio Management and Licensing) (2019, 2020)
  • Daily Report Intellectual Property Litigation Department of the Year (2017)
  • IAM Patent 1000 ‒ DC Metro Area (2015 to 2020); Georgia (2019, 2020); Illinois (2019, 2020); Pennsylvania (2015 to 2020); Washington (2015 to 2020)
  • WTR 1000 – The World's Leading Trademark Professionals ‒ Firm and attorney rankings (2013 to 2020)
  • U.S. News – Best Lawyers “Best Law Firms”
    • Copyright Law: National (2012 to 2020); Atlanta (2019, 2020); New York (2018 to 2020); Philadelphia (2014 to 2020)
    • Intellectual Property Law – Orlando (2011 to 2020)
    • Litigation – Intellectual Property: National (2012 to 2020); Chicago (2019, 2020); Cincinnati (2012 to 2020); Cleveland (2012 to 2020); Columbus (2017 to 2020); Houston (2018 to 2020); New York (2012 to 2020); Costa Mesa (2013 to 2020); Orlando (2012 to 2020); Philadelphia (2014 to 2020); Washington, D.C. (2017 to 2020)
    • Litigation – Patent: National (2014 to 2020); Chicago (2019, 2020); Cincinnati (2012 to 2020); Cleveland (2014 to 2020); Houston (2018, 2019); Philadelphia (2014 to 2020); Washington, D.C. (2014 to 2020)
    • Patent Law: National (2012 to 2020); Atlanta (2016 to 2020); Chicago (2020); Cincinnati (2012 to 2020); Philadelphia (2014 to 2020); Seattle (2017 to 2020); Washington, D.C. (2013 to 2020)
    • Trademark Law: National (2015 to 2020); Cleveland (2017 to 2020); New York (2017 to 2020); Philadelphia (2014 to 2020); Washington, D.C. (2017 to 2020)
  • Recognized as one of the top law firms for client service, BakerHostetler was named to the 2020 BTI Client Service 30 for the sixth consecutive year.

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
The Sun Has Set on CBM Review
By Jennifer M. Kurcz, Alaina J. Lakawicz
September 23, 2020
Earlier this month, on September 16, 2020, the Transitional Program for Covered Business Method (CBM) Review expired.[1] Enacted as part of the AIA and spanning eight years, CBM Review was promoted within Congress as a vehicle to challenge...
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IP Intelligence: Insight on Intellectual Property
Strategic Considerations for Participation in the USPTO's COVID-19 Deferred-Fee Provisional Application Pilot
By Fabian M. Koenigbauer
September 21, 2020
On Sept. 17, the United Patent and Trademark Office (USPTO) issued a notice implementing a deferred-fee provisional application pilot program for COVID-19-related technologies. The pilot is designed “[t]o disseminate information designed...
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IP Intelligence: Insight on Intellectual Property
Justice Ginsburg's Dissents – in Patent Law
By Jason F. Hoffman
September 21, 2020
As the country collectively mourns the passing of Justice Ruth Bader Ginsburg, I am reminded of the inspiring book “I Dissent: Ruth Bader Ginsburg Makes Her Mark” (which I have read to my children many times). While the justice was famous...
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IP Intelligence: Insight on Intellectual Property
Is Your Trademark Portfolio Brexit-Ready? Steps to Take Now to Ensure a Smooth Transition
By Lesley M. Grossberg
September 15, 2020
While the UK formally left the EU on January 31, 2020, “Exit Day” will occur on December 31, 2020. Are your trademarks ready? This article provides a brief checklist of considerations as we approach the hard exit date at the end of this...
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IP Intelligence: Insight on Intellectual Property
Landmark UK Supreme Court Decision Grants UK Courts Power to Set the Global Royalty Rate for Standard Essential Patents
By Fabian M. Koenigbauer
August 31, 2020
On Aug. 26, 2020, the United Kingdom Supreme Court issued a decision in Unwired Planet International Ltd & Anor v Huawei Technologies (UK) Co Ltd & Anor [2020] UKSC 37 that changes the landscape for patentees seeking to enforce standard...
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