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.
Partner Washington, D.C.
Partner Philadelphia
Associate Denver
Associate Philadelphia
Associate Seattle
Of Counsel Atlanta
Partner Seattle
Staff Attorney Washington, D.C.
Patent Attorney Philadelphia
Associate Cleveland
Partner Atlanta
Counsel Atlanta
Partner Washington, D.C.
Associate Seattle
Counsel Atlanta
Associate Philadelphia
Partner Philadelphia
Associate Columbus
Partner Washington, D.C.
Patent Attorney Atlanta
Associate Cincinnati
Partner Philadelphia
Of Counsel Philadelphia
Partner Philadelphia
Partner Chicago
Patent Agent Philadelphia
Patent Agent Washington, D.C.
Patent Attorney Atlanta
Partner Washington, D.C.
Associate Philadelphia
Partner Washington, D.C.
Associate Philadelphia
Associate Atlanta
Staff Attorney Washington, D.C.
Associate Philadelphia
Associate Philadelphia
Partner Cincinnati
Associate Washington, D.C.
Associate Philadelphia
Counsel Washington, D.C.
Partner Washington, D.C.
Associate Seattle
Partner Philadelphia
Partner Philadelphia
Associate Chicago
Partner Philadelphia
Counsel Chicago
Partner Philadelphia
Associate Seattle
Associate Washington, D.C.
Partner Washington, D.C.
Partner Chicago
Patent Attorney Philadelphia
Partner Seattle
Partner Seattle
Associate Seattle
Associate Atlanta
Associate Washington, D.C.
Patent Attorney Denver
Partner New York

Recognition

  • Chambers USA: Nationwide Privacy & Data Security (2013 to 2018)
    • Chambers USA Privacy and Data Security - Healthcare Spotlight Table (2018)
  • Chambers USA: Intellectual Property:
    • Trademark & Copyright in New York (2014 to 2017)
    • Georgia Intellectual Property (2018)
      • Band 4
    • Ohio Intellectual Property (2018)
      • Band 2
    • Pennsylvania Intellectual Property (2018)
      • Band 1
    • Recognized Practitioner: Intellectual Property Litigation in District of Columbia (2018).
    • Recognized Practitioner: Intellectual Property Patent Prosecution in District of Columbia (2018).
    • Recognized Practitioner: Intellectual Property Trademark, Copyright & Trade Secrets in New York (2018). 
    • Recognized Practitioner: Trademark, Copyright & Trade Secrets in the District of Columbia (2015 to 2017)
  • Recognized as one of the top law firms for client service, BakerHostetler was named to the 2019 BTI Client Service 30 for the fifth consecutive year.

Key Contacts

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
IPO's "Gender Diversity in Innovation Toolkit" Aims to Address Disparities in Inventorship
By Lesley M. Grossberg
November 14, 2019
While women are awarded 53% of PhDs, they accounted for only 12% of named inventors on U.S. patents granted in 2016. Fewer than 30% of Patent Cooperation Treaty applications name a woman inventor. After the U.S. Patent and Trademark Office...
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IP Intelligence: Insight on Intellectual Property
The theory of “trademark neutralization.” What is it and will it likely be adopted in the US?
November 11, 2019
Have you heard of the theory of “trademark neutralization?” It was developed by the European Union (EU) General Court and the European Union Court of Justice (“CJEU”) in 2006 (Case No. C-361/04 (ECJ Jan. 12, 2005)) holding PICASSO/PICARO...
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IP Intelligence: Insight on Intellectual Property
Five Counterfeit Hotspots in New York that Brand Owners Must Be Aware Of
By Robertson D. Beckerlegge, Heather J. McDonald
November 8, 2019
The issue of fake goods in New York City has been widely covered for a number of years. For example, earlier this year, the South China Morning Post looked at the “rising counterfeit market” in New York, especially around luxury goods. It...
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IP Intelligence: Insight on Intellectual Property
Kanye West Denied Trademark Registration for ‘SUNDAY SERVICE' Mark
By C. Dennis Loomis
October 23, 2019
Global rap icon Kanye West is one of the most visible and controversial personalities on the contemporary scene. He has long been recognized as one of the best rap creators and performers of his generation. More recently, his prominence...
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IP Intelligence: Insight on Intellectual Property
Are Questions of Novelty and Nonobviousness Relevant to the Test for Whether a Patent Qualifies as a Covered Business Method Patent Under the AIA?
By Michael D. Gannon
October 22, 2019
A covered business method (CBM) patent “does not include patents for technological inventions.” AIA § 18(d)(1). The United States Patent and Trademark Office (USPTO) promulgated a regulation that defines “a technological invention” as one...
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