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
The USPTO Harmonizes the Indefiniteness Standard Used for AIA Trials Making it More Difficult to Find a Claim Indefinite
By Fabian M. Koenigbauer
January 14, 2021
Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35 U.S.C. § 112 for...
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IP Intelligence: Insight on Intellectual Property
Election Ballot Verification – A Patent Subject Matter Eligibility Analysis
By Gabriel T. Applegate
January 12, 2021
In light of recent events, technologies directed toward verifying voter ballots may sound like attractive investment opportunities. However, potential investors often seek to ensure a technology is protected by one or more valid patents...
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IP Intelligence: Insight on Intellectual Property
Copyright Claims Board To Be Established; Criminal Streaming Law
By Deborah A. Wilcox
December 23, 2020
Congress passed an act on Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief bill, expected to signed by President Trump, which will establish a voluntary dispute resolution process in the...
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IP Intelligence: Insight on Intellectual Property
Congress Passes the Trademark Modernization Act
By Deborah A. Wilcox
December 23, 2020
On Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief package, Congress passed the Trademark Modernization Act, which President Trump is expected to sign. With respect to trademark infringement...
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IP Intelligence: Insight on Intellectual Property
Assessing Risks in a Deal, How to Partner with Your Business Team
December 10, 2020
Businesses are not stagnant, and products change both in name and content. Brands are acquired as part of an acquisition, lines are extended in licenses, product lines are extended as businesses change. How do attorneys work with their...
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