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
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
Counsel Atlanta
Associate Philadelphia
Partner Philadelphia
Partner Washington, D.C.
Associate New York
Associate Atlanta
Partner Philadelphia
Of Counsel Philadelphia
Partner Philadelphia
Partner Chicago
Partner Seattle
Associate Philadelphia
Partner Washington, D.C.
Associate Philadelphia
Partner Washington, D.C.
Associate Philadelphia
Associate Atlanta
Associate Washington, D.C.
Associate Philadelphia
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 Chicago
Associate Philadelphia
Partner Seattle
Partner Seattle
Associate Seattle
Associate Philadelphia
Associate Atlanta
Associate Washington, D.C.
Partner Washington, D.C.

Recognition

  • Chambers USA: Intellectual Property
    • Recognized Practitioner: Patent Prosecution in the District of Columbia (2015 to 2017)
  • 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
Intellectual Ventures v. Motorola: Use = Benefit for the Purposes of System Claims Infringement
September 21, 2017
On Sept. 13, 2017, the United States District Court for the Federal Circuit clarified the meaning of the term “use” as it applies to system claims in patent infringement actions. In doing so, the court held that an infringer must benefit...
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IP Intelligence: Insight on Intellectual Property
A Cautionary Tale: IPR Petition Denied Based on Third-Party Submission
August 30, 2017
In Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper 7 (Aug. 22, 2017), the Patent Trial and Appeal Board (Board) denied an inter partes review because the same or substantially the same prior art or arguments were said to have been...
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IP Intelligence: Insight on Intellectual Property
Federal Circuit’s Concern Regarding PTAB ‘Panel-Stacking’ – Back To The Future?
August 29, 2017
In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 2017 U.S. App. LEXIS 15923, Circuit Judge Dyk, in a concurring opinion joined by Circuit Judge Wallace, questioned “whether the practice of expanding panels where the PTO is...
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IP Intelligence: Insight on Intellectual Property
Visual Memory v. NVIDIA: The Importance of a Robust Written Description
August 17, 2017
Introduction In Visual Memory v. NVIDIA (Fed. Cir. 2017), the Federal Circuit reversed the district court’s holding that Visual Memory’s U.S. Patent No. 5,953,740 is drawn to patent-ineligible subject matter. Instead, the court ruled that...
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IP Intelligence: Insight on Intellectual Property
Federal Circuit Suggests Solution to Patent Owner's Dilemma When Applicant for Biosimilar Product Refuses Discovery
By Allen M. Sokal
August 14, 2017
In Amgen, Inc. v. Hospira, Inc., Appeal No. 2016-2179 (Fed. Cir. Aug. 10, 2017), the Federal Circuit suggested what an owner of a reference product suing an applicant for a biosimilar under the Biologics Price Competition and Innovation...
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