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 40 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
Associate Washington, D.C.
Partner Washington, D.C.
Partner Washington, D.C.
Partner Philadelphia
Associate Philadelphia
Of Counsel Washington, D.C.
Associate Philadelphia
Associate Atlanta
Of Counsel Atlanta
Partner Seattle
Staff Attorney Washington, D.C.
Associate Philadelphia
Associate Cleveland
Associate Atlanta
Partner Washington, D.C.
Partner Philadelphia
Associate Seattle
Partner Philadelphia
Counsel Atlanta
Associate Philadelphia
Partner Philadelphia
Partner Washington, D.C.
Associate Atlanta
Partner Philadelphia
Of Counsel Philadelphia
Partner Philadelphia
Partner Seattle
Associate Philadelphia
Partner Washington, D.C.
Associate Philadelphia
Partner Washington, D.C.
Associate Philadelphia
Associate Atlanta
Counsel Washington, D.C.
Associate Washington, D.C.
Partner Cincinnati
Associate Washington, D.C.
Partner Cleveland
Associate Philadelphia
Partner Washington, D.C.
Associate Washington, D.C.
Partner Washington, D.C.
Associate Seattle
Partner Philadelphia
Partner Atlanta
Partner Philadelphia
Partner Philadelphia
Partner Chicago
Partner Philadelphia
Associate Seattle
Associate Philadelphia
Associate Seattle
Patent Agent Washington, D.C.
Partner Washington, D.C.
Associate Philadelphia
Partner Seattle
Partner Seattle
Technical Advisor Seattle
Associate Philadelphia
Associate Atlanta
Associate Washington, D.C.
Partner Washington, D.C.

Recognition

  • BTI Client Service 30: BakerHostetler advanced 19 positions to #9 (2016)

News

News

Press Releases

Key Contacts

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
The Supreme Court, Reversing the Federal Circuit, Holds that "Residence" in the Patent Venue Statute Refers to Only a Domestic Corporation's State of Incorporation
By Allen M. Sokal
May 24, 2017
In a brief, well-reasoned opinion, a unanimous eight-member Supreme Court held that 28 U.S.C. § 1400(b) is a stand-alone provision governing venue in patent infringement suits, unaffected by the broad definition of “residence” in the...
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IP Intelligence: Insight on Intellectual Property
Living it up at the HOTEL CALIFORNIA
May 18, 2017
Legendary rock band Eagles, Ltd. (The Eagles), filed suit on May 1 against the owners of the Hotel California Baja LLC in the U.S. District Court for the Central District of California. The suit alleges trademark infringement and common...
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IP Intelligence: Insight on Intellectual Property
In Case of First Impression, Federal Circuit Rules that a Patent Owner’s Statements in an IPR Proceeding Can Create Prosecution Disclaimer
By Allen M. Sokal
May 15, 2017
  In Aylus Networks, Inc. v. Apple Inc., Appeal No. 2016-1599 (Fed. Cir. May 11, 2017), the Federal Circuit ruled that a patent owner’s statements during an inter partes review (IPR), even if before an institution decision, can create...
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IP Intelligence: Insight on Intellectual Property
Court Finds Infringement of THE KRUSTY KRAB Mark
May 12, 2017
In Viacom International Inc. v. IJR Capital Investments, LLC, 2017 WL 1037294 (S.D. Tex. Mar. 17, 2017), Viacom successfully asserted common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant, which appears in the...
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IP Intelligence: Insight on Intellectual Property
Federal Circuit Remands Novel Issue on Patent Marking Requirement
By Allen M. Sokal
May 10, 2017
On April 17, 2017, the United States Court of Appeals for the Federal Circuit vacated an award of more than $15 million in damages because a plaintiff’s licensee failed to mark patented articles. Rembrandt Wireless Technologies, LP v...
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