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
Canada: New Trademark Laws Go Into Effect
June 26, 2019
On June 17, Canada implemented long-awaited changes to its trademark laws. These updates are designed to modernize Canadian trademark practice and bring Canada more in line with international practice. Businesses with brand interests in...
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IP Intelligence: Insight on Intellectual Property
Protected and Unfiltered. Supreme Court Strikes Down the Lanham Act’s Scandalous and Immoral Restrictions.
June 25, 2019
In April at oral argument, the bench grappled with the issue of viewpoint discrimination based on the literal meaning of the statute and the genuine concern that without regulation, profane and obscene language and images will be imprinted...
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IP Intelligence: Insight on Intellectual Property
Risks and Rewards of Digital Therapeutics in Treating Mental Disorders – Part II
June 25, 2019
The Promise of Digital Therapeutics According to Wikipedia, digital therapeutics can be defined as a treatment or therapy that utilizes digital health technologies to spur changes in patient behavior. The first mention of the term in a...
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IP Intelligence: Insight on Intellectual Property
Return Mail May Make COFC More Attractive To Patent Holders
June 20, 2019
This article was first published by Law360 on June 19, 2019. Authored by: William Bergmann and Michael Anderson In 2011 the Leahy-Smith America Invents Act created three new types of post-issuance proceedings to challenge patent validity...
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IP Intelligence: Insight on Intellectual Property
Risks and Rewards of Digital Therapeutics in Treating Mental Disorders – Part I
June 20, 2019
Introduction More Americans than ever before are suffering from mental and emotional distress. In the United States, the mental health problem is exacerbated by issues across infrastructure, government and culture. However, because the...
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