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
Federal Circuit holds that claims directed to diagnosing neurotransmission or developmental disorders are invalid for failing to recite patent eligible subject matter
By Ronald C. Kern Jr., Ph.D.
February 11, 2019
In Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC,[1] the Federal Circuit affirmed the district court’s ruling that claims covering methods for diagnosing neurological disorders by detecting autoantibodies are directed to a...
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IP Intelligence: Insight on Intellectual Property
Supreme Court Unshrouds the ‘On Sale' Bar as Applied to Secret Sales
By Erin C. Caldwell
January 25, 2019
This week, the Supreme Court issued a decision holding that a secret sale qualifies as prior art. At issue was whether the America Invents Act (AIA) changed the “on sale” bar to patentability to exempt secret sales as prior art.[1] The...
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IP Intelligence: Insight on Intellectual Property
The ‘Integrated Into a Practical Application' Test of the 2019 Revised Patent Subject Matter Eligibility Guidance
By Michael D. Stein
January 7, 2019
On Jan. 4, 2019, the USPTO announced revised guidance relevant to Section 101 rejections (“2019 Revised Patent Subject Matter Eligibility Guidance”). The 2019 Revised Patent Subject Matter Eligibility Guidance explains that a claim that...
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IP Intelligence: Insight on Intellectual Property
The Federal Circuit Weighs In on Evidentiary Considerations for Famous Marks and Analyzes Third-Party Usage
December 18, 2018
The Court of Appeals for the Federal Circuit recently held that the Trademark Trial and Appeal Board (TTAB) erred in concluding that there is no likelihood of confusion between Omaha Steaks International’s registered trademarks and Greater...
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IP Intelligence: Insight on Intellectual Property
PTAB Denies Institution Despite Petitioner Demonstrating Reasonable Likelihood of Prevailing With Respect to at Least One Claim
By David N. Farsiou
November 12, 2018
In SAS Institute v. Iancu, 138 S. Ct. 1348, 1351 (2018), the Supreme Court held that when the Patent Trial and Appeal Board (the Board) institutes an inter partes review, it must decide the patentability of all the claims the petitioner...
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