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
What Does Brexit Mean for Your European Union Trademarks?
By Deborah A. Wilcox
January 31, 2020
The United Kingdom withdraws from the European Union today. The implementation period runs for the next 11 months, through Dec. 31. During this time, European Union trademark filings (“EUTMs”) will continue in full force in the U.K. Unless...
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IP Intelligence: Insight on Intellectual Property
Be Sure to Ask Your Scientists the Right Questions or Risk Losing Patent Protection
January 27, 2020
Welcome to the IP Intelligence Blog. We have merged the Copyright, Content, and Platforms blog into the IP Intelligence Blog to provide a single source for IP updates. We hope you enjoy our thought provoking posts on Intellectual Property...
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IP Intelligence: Insight on Intellectual Property
PTAB by the numbers: A closer look at the most recent PTAB AIA trial statistics
By Fabian M. Koenigbauer
January 23, 2020
The United States Patent and Trademark Office (USPTO) recently posted the Patent Trial and Appeal Board (PTAB) statistics for December 2019 (first quarter of FY2020).[1] Despite some inconsistences in the data, the statistics reveal some...
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IP Intelligence: Insight on Intellectual Property
Can Booking.com Trademark Its Company Name? How Will the U.S. Supreme Court Resolve Whether a Generic Term Plus a Top-Level Domain Is Protectable?
By Jason S. Oliver
January 15, 2020
The legal battle between Booking.com BV and the U.S. Patent and Trademark Office (USPTO) began more than five years ago and concerns whether the online hotel booking company can secure a trademark registration for its name. After filing...
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IP Intelligence: Insight on Intellectual Property
Who Is Holding the Bag: How Will the Supreme Court Resolve the Circuit Split on Recovery of Profits in Trademark Cases?
By Jacqueline M. Lesser
December 31, 2019
Two weeks from now, on January 14, 2020, the Supreme Court will hear oral argument in Romag Fasteners, Inc. v. Fossil, Inc. on the long-standing circuit split over whether willful infringement is a necessary precondition for an award of...
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