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 Philadelphia
Associate Seattle
Partner Seattle
Staff Attorney Washington, D.C.
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 Attorney Atlanta
Associate Atlanta
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
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
Partner Seattle
Associate Seattle
Associate Atlanta
Associate Washington, D.C.
Patent Attorney Denver

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 2020 BTI Client Service 30 for the sixth consecutive year.

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
3D Printing Comes of Age in the COVID-19 Crisis
By Aaron B. Rabinowitz
April 2, 2020
Thanks to the global availability of additive manufacturing and 3D printing (3DP) and to the easy sharing of 3DP designs, a teenager in Iowa with a 3D printer can print face shields based on a design uploaded only minutes earlier by an...
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IP Intelligence: Insight on Intellectual Property
US Patent and Trademark Office Uses Authority Granted Under CARES Act to Temporarily Extend Due Date for Certain Patent and Trademark Matters
By Fabian M. Koenigbauer
April 1, 2020
The Coronavirus Aid, Relief, and Economic Security (CARES) Act gives the director of the U.S. Patent and Trademark Office (USPTO) the ability to manage due dates in patent and trademark matters if certain criteria are met. On March 31, the...
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IP Intelligence: Insight on Intellectual Property
Invoking Equity in the Time of COVID-19
By Christina J. Moser
March 31, 2020
Talk about bad timing. On Friday, March 6, 2020, non-practicing patent holding company Labrador Diagnostics formed in Delaware and obtained a patent portfolio directed to testing patients for the presences of coronavirus—when the United...
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IP Intelligence: Insight on Intellectual Property
Patent Portfolio Considerations During Times of Financial Uncertainty
By Erin C. Caldwell
March 27, 2020
In response to the economic effects of the COVID-19 pandemic, many companies are reevaluating their expenditures. Some may look to their intellectual property portfolios as a place to cut costs. But any decisions to scale back on...
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IP Intelligence: Insight on Intellectual Property
The Coronavirus Aid, Relief, and Economic Security Act Grants the US Patent and Trademark Office the Authority to Manage Statutory Due Dates
By Fabian M. Koenigbauer
March 27, 2020
As described in our previous alert, earlier this week the U.S. Patent and Trademark Office (USPTO) issued a notice waiving certain petition fees. In the notice, the USPTO cautioned that “[t]his notice does not grant waivers or extensions...
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