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 30 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
Patent Attorney Cincinnati
Partner Atlanta
Partner Philadelphia
Partner Costa Mesa
Partner Denver
Counsel Dallas
Partner Seattle
Partner Cleveland
Partner Atlanta
Counsel Atlanta
Partner Washington, D.C.
Associate Seattle
Partner Costa Mesa
Partner San Francisco
Partner Philadelphia
Associate Costa Mesa
Associate Columbus
Patent Attorney Atlanta
Associate Cincinnati
Partner Philadelphia
Associate Cincinnati
Associate Atlanta
Partner Washington, D.C.
Counsel Atlanta
Partner Costa Mesa
Associate Philadelphia
Associate Philadelphia
Patent Attorney Philadelphia
Partner Philadelphia
Patent Agent Costa Mesa
Counsel Philadelphia
Partner Cincinnati
Associate Philadelphia
Associate Philadelphia
Senior Patent Agent Costa Mesa
Counsel New York
Patent Attorney Orlando
Associate Chicago
Partner Washington, D.C.
Associate Seattle
Partner Philadelphia
Partner Philadelphia
Partner Philadelphia
Associate Seattle
Associate Seattle
Patent Counsel Philadelphia
Partner Seattle
Partner Seattle
Partner Atlanta
Patent Counsel Washington, D.C.
Associate Philadelphia
Partner Denver

Recognition

  • Chambers USA
    • Intellectual Property ‒ Ohio (2011 to 2021)
    • Intellectual Property ‒ Georgia (2017 to 2021)
    • Intellectual Property ‒ Pennsylvania (2007 to 2021)
    • Intellectual Property: Litigation ‒ District of Columbia (2015 to 2021)
    • Intellectual Property: Patent Prosecution ‒ District of Columbia (2015 to 2021)
    • Intellectual Property: Trademark, Copyright & Trade Secrets ‒ New York (2014 to 2021)
  • The Legal 500 United States
    • Intellectual Property – Copyright (2015 to 2021)
    • Intellectual Property – Patent Litigation: Full Coverage (2015 to 2020)
    • Intellectual Property – Patents: Prosecution (Including Re-Examination and Post-Grant Proceedings) (2015 to 2021)
    • Intellectual Property – Trade Secrets (Litigation and Non-Contentious Matters) (2017 to 2021)
    • Intellectual Property – Trademarks: Non-Contentious (Including Prosecution, Portfolio Management and Licensing) (2019 to 2021)
  • Daily Report Intellectual Property Litigation Department of the Year (2017)
  • IAM Patent 1000 ‒ DC Metro Area (2015 to 2020); Georgia (2019, 2021); Illinois (2019, 2021); Pennsylvania (2015 to 2021); Washington (2015 to 2021)
  • WTR 1000 – The World's Leading Trademark Professionals ‒ Firm and attorney rankings (2013 to 2021)
  • U.S. News – Best Lawyers “Best Law Firms”
    • Copyright Law: National (2012 to 2021); Atlanta (2019 to 2021); New York (2018 to 2021); Philadelphia (2014 to 2021)
    • Intellectual Property Law – Orlando (2011 to 2020)
    • Litigation – Intellectual Property: National (2012 to 2021); Atlanta (2021); Chicago (2019 to 2021); Cincinnati (2012 to 2021); Cleveland (2012 to 2021); Columbus (2017 to 2020); Dallas/Fort Worth (2021); Houston (2018 to 2020); New York (2012 to 2021); Costa Mesa (2013 to 2021); Orlando (2012 to 2021); Philadelphia (2014 to 2021); Washington, D.C. (2017 to 2020)
    • Litigation – Patent: National (2014 to 2021); Chicago (2019 to 2021); Cincinnati (2012 to 2021); Cleveland (2014 to 2021); Houston (2018, 2019); Philadelphia (2014 to 2021); Washington, D.C. (2014 to 2020)
    • Patent Law: National (2012 to 2021); Atlanta (2016 to 2021); Chicago (2020, 2021); Cincinnati (2012 to 2021); Colorado (2021); Philadelphia (2014 to 2021); Seattle (2017 to 2021); Washington, D.C. (2013 to 2020)
    • Trademark Law: National (2015 to 2021); Cleveland (2017 to 2021); New York (2017 to 2020); Philadelphia (2014 to 2021); 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.

Key Contacts

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Solicitor General Recommends that Supreme Court Accept Review of Case Involving Extraterritorial Reach of U.S. Trademark Law
September 28, 2022
In a May 2022 post, we noted that the Supreme Court called for the views of the Solicitor General on whether to accept review of Abitron Austria GmbH v. Hetronic International, Inc., a case involving the international reach of U.S...
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IP Intelligence: Insight on Intellectual Property
Federal Circuit: AI Cannot Be a Named ‘Inventor' Under the Patent Act
By Phillip D. Wolfe
August 9, 2022
On August 5, 2022, the Federal Circuit in Thaler v. Vidal ruled that an artificial intelligence (AI) system cannot be listed as a named inventor on a patent application, affirming the United States Patent and Trademark Office (USPTO) and...
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IP Intelligence: Insight on Intellectual Property
Chicago Cubs score home run in their opposition against a stylized version of the letter "C"
By Robert B.G. Horowitz
July 26, 2022
In many countries, marks such as single letters or numerals are considered nondistinctive. This is not so in the US, which has a very broad definition of what comprises a trademark in 15 U.S.C. Section 1127: A trademark is any word, name...
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IP Intelligence: Insight on Intellectual Property
Characterization of Claim Elements as "Conventional" Results in Section 101 Subject Matter Ineligibility
By Ronald C. Kern Jr., Ph.D.
July 25, 2022
In an attempt to broaden a patent’s disclosure and provide Section 112 support for features that are not explicitly disclosed within the patent’s specification (such as reagents, assays, techniques, etc.), patent applications are often...
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IP Intelligence: Insight on Intellectual Property
A Recent Entrance to Copyright Protection: Can AI Qualify as an Author Under U.S. Copyright Law?
By Cory N. Barnes
June 10, 2022
Should copyright protection be given for AI-generated inventions? Stephen Thaler, the president and CEO of Imagination Engines, thinks so. The Complaint In 2018, Thaler filed an application to register a copyright for an AI-generated work...
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