Herbert E. Hoffman

Associate

Philadelphia
T +1.215.564.2157
F +1.215.568.3439

Overview

Herb Hoffman's practice includes developing and managing intellectual property portfolios for a wide range of clients in the electrical, mechanical and computer technology areas. He also works with startup companies, as well as long-established corporations, to assess and develop their intellectual property (IP) portfolios. Herb prepares legal opinions and conducts patentability and freedom-to-operate analyses. In addition to patent prosecution, Herb also helps clients realize the value of their intellectual property through litigation and litigation avoidance.

Prior to entering the legal profession, Herb was a systems engineer for SI Organization, where his responsibilities included providing full life cycle, mission-focused systems engineering and integration services to the U.S. intelligence community, the Department of Defense and other agencies. Herb was also a participant in the Intellectual Property Strategy Board, which assessed and evaluated internal technical capabilities and recommended appropriate IP protective measures. As a systems engineer for Lockheed Martin, Herb performed modeling and simulation for space vehicle dynamics, control systems, robotics and structural systems. Herb also has experience with all the stages of system engineering design and development, including system design, system architecture development, modeling and simulation.

Select Experience

  • Worked with clients to prosecute patents in the U.S. and foreign countries for technology related to the smart-energy metering business, including working closely with inventors to understand the nature of the technology, as well as the specific embodiments of the inventions.
  • Drafted and prosecuted patents in the U.S. related to oil drilling technology, mechanical systems and devices, software, and communication channels and networks.
  • Worked with inventors, engineers and counsel to evaluate the IP that was developed through corporate research and development to determine the commercial potential of the technology. Reviewed patent applications for technical accuracy and claim construction.
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Experience

  • Worked with clients to prosecute patents in the U.S. and foreign countries for technology related to the smart-energy metering business, including working closely with inventors to understand the nature of the technology, as well as the specific embodiments of the inventions.
  • Drafted and prosecuted patents in the U.S. related to oil drilling technology, mechanical systems and devices, software, and communication channels and networks.
  • Worked with inventors, engineers and counsel to evaluate the IP that was developed through corporate research and development to determine the commercial potential of the technology. Reviewed patent applications for technical accuracy and claim construction.
  • Provided legal advice to several startup companies regarding their IP rights during initial development, marketing and sale, and merging and joint ventures with other companies.
  • Helped develop legal opinions assessing the likelihood of infringement. This has included performing research on existing patents and technology, and assessing client products to determine the extent of any similarities.

Recognitions and Memberships

Memberships

  • Philadelphia Bar Association
  • Philadelphia Intellectual Property Law Association
  • American Society of Mechanical Engineers

Prior Positions

  • Woodcock Washburn LLP: Technical Advisor (2012 to 2013)
  • SI Organization: Systems Engineer (2010 to 2012)
  • Lockheed Martin: Systems Engineer (2000 to 2010)

Admissions

  • U.S. Patent and Trademark Office, Registration No. 72,803
  • Pennsylvania

Education

  • J.D., Temple University Beasley School of Law, 2013
  • M.S., Mechanical Engineering, University of Pennsylvania, 2006
  • B.S., Mechanical Engineering, Lehigh University, 2002

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Trademark Office Takes Tougher Stance on Registering Rights to Colors on Packaging
By Shannon V. McCue
October 12, 2018
Trademark law recognizes that a color can be used to identify the source of products and therefore, enjoys protection under trademark law. Let’s test your color brand awareness: • What can Brown do for you? – shipping services • The little...
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IP Intelligence: Insight on Intellectual Property
USPTO Memo Addresses Eligibility of Method-of-Treatment Claims in View of Federal Circuit Decision
By David N. Farsiou
June 18, 2018
In a memorandum dated June 7, 2018 (Memo), the U.S. Patent and Trademark Office (USPTO) set out new guidance concerning method-of-treatment claims, which should be welcome news for patentees. The memo addressed the decision by the U.S...
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IP Intelligence: Insight on Intellectual Property
Additional Discovery of Clinical Trial Data in Inter Partes Review
By Timothy J. Doyle, David N. Farsiou
March 30, 2018
In Apotex, Inc. et al. v. Novartis AG (IPR 2017-00854, paper 47 dated Feb. 5, 2018), petitioner Apotex sought, and was granted, discovery of a Phase III clinical trial protocol from patent owner Novartis. The patent at issue in the IPR...
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IP Intelligence: Insight on Intellectual Property
Core Wireless: Moving Beyond Eligibility as the Exception to the Exception?
By Brendan E. Clark
February 8, 2018
January was an exciting month for patent professionals still attempting to make sense of the fallout from the Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision. Hot on the heels of its Jan. 10 decision in Finjan, Inc. v...
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IP Intelligence: Insight on Intellectual Property
Finjan v. Blue Coat Systems: Attaching Security Profile to a Downloadable Is Patent Eligible
January 16, 2018
In Finjan v. Blue Coat Systems, the Court of Appeals for the Federal Circuit rendered a decision containing interesting rulings on patentable subject matter (affirming the District Court determination that certain claims were patent...
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