Tayan B. Patel

Partner

Washington, D.C.
T +1.202.861.1500
F +1.202.861.1783

Overview

Tayan Patel specializes in intellectual property and technology counseling and transactions with a focus on procurement, monetization, and risk management strategies in the high-tech, life sciences, and financial sectors. From start-ups to Fortune 50 companies, Tayan fully immerses himself in his clients' technologies to understand their current and long-term objectives in order to provide practical business advice. Coupled with his deep technical and educational experience in both electrical and chemical engineering, Tayan is uniquely qualified not only to deliver the results his clients expect, but also develop and execute strategies they may not have known were even possible.

Tayan's transactional and litigation experience over the last 15 years spans a vast array of technologies including wireless and optical communications, software/AI, cloud computing, data analytics, AR/VR, fintech, consumer electronics, heavy machinery, semiconductors, pharmaceuticals, and chemical/material processing. As a trusted business counselor, Tayan proactively locates opportunities with prospective investors, collaborators, licensees(ors) and targets; provides IP and technology valuations; and structures complementary IP, technology, data rights, and commercial agreements aligned with their business interests.

As a former patent examiner, Tayan is skilled at helping clients navigate cases through the USPTO's complex ecosystem. His ability to quickly understand difficult issues and thoughtfully communicate arguments to the USPTO helps minimize the cost and time spent procuring rights, as well as preserving broad claim scope post-issuance to deter competitive encroachment. Tayan and his team have successfully employed post-grant vehicles such as reissue, reexamination, and supplemental examination to preemptively strengthen patent assets ahead of licensing and assertion campaigns. Defensively, he and his team routinely monitor competitive IP assets and conduct due diligence to counsel clients on appropriate contentious and non-contentious risk mitigation options around their most valuable commercial interests.

Select Experience

Transactional and Monetization Counseling
  • Assisted a software services company in drafting and updating its various software, privacy and intellectual property agreements with vendors and customers.
  • Assisted a financial services company in drafting a confidentiality and intellectual property agreement.
Intellectual Property Procurement and Portfolio Management
  • Represents a technology company in procuring intellectual property directed towards wireless, optical, telecommunications and cybersecurity technology. The company has filed more than 200 new patent applications.
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Experience

Transactional and Monetization Counseling
  • Assisted a software services company in drafting and updating its various software, privacy and intellectual property agreements with vendors and customers.
  • Assisted a financial services company in drafting a confidentiality and intellectual property agreement.
  • Represented a large telecommunications company in the analysis and enforcement of indemnification rights across complex patent infringement litigations, resulting in the recovery of significant monetary amounts.
  • Drafted and negotiated an intellectual property and technology license agreement for a mid-sized filter company.
  • Drafted and negotiated a distribution agreement on behalf of a company to procure and sell goods manufactured by a foreign entity.
  • Drafted and negotiated a joint development agreement between a Fortune 500 chemical company and a European chemical company.
  • Drafted and negotiated a worldwide license between a Fortune 500 company and a large foreign company.
  • Prepared and negotiated a joint development agreement between a Fortune 500 chemical company and a European chemical company.
  • Represented a technology client on a deal to sell a large worldwide wireless IP portfolio.
  • Identified and introduced acquisition targets to a manufacturing company seeking to expand footprint in strategic geographic areas.
  • Represents a hospitality company in licensing out intellectual property.
Intellectual Property Procurement and Portfolio Management
  • Represents a technology company in procuring intellectual property directed towards wireless, optical, telecommunications and cybersecurity technology. The company has filed more than 200 new patent applications.
  • Represents a mid-sized Asian pharmaceutical company seeking to expand its footprint in the US.
  • Represents a large foreign government entity seeking to procure intellectual property in the US.
  • Successfully argued numerous patent cases before the Patent Trial and Appeal Board involving technologies such as semiconductors, wireless, consumer products and software technology.
  • Managed a global IP patent portfolio for a Fortune 500 company specializing in inks, coatings and adhesives, including coordination and oversight of foreign counsel.
  • Managed several European opposition and appeal matters relating to security printing inks, pigments and dyes, over a three-year period.
  • Managed a large semiconductor intellectual property portfolio on behalf of a Japanese client.

Recognitions and Memberships

Recognitions

  • The Legal 500 United States (2019)
    • Recommended in Intellectual Property - Patent: Prosecution (including reexamination and post-grant proceedings)
  • India Business Law Journal (2019)
    • Ranked among leading International Counsel for India-related work

Memberships

  • Licensing Executive Society
    • High Technology Sector
  • National Asian Pacific American Bar Association (NAPABA)
  • South Asian Bar Association of North America
  • American Bar Association

Community

  • Stevens Venture Center: Entrepreneur-in-Residence

Admissions

  • U.S. Patent and Trademark Office, Registration No. 58,402
  • District of Columbia
  • New York

Education

  • J.D., Rutgers University School of Law
  • M.S., Electrical Engineering, Drexel University
  • B.E., Chemical Engineering, Stevens Institute of Technology

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
Precedential Opinion Stressing That Design Patents Cover Articles of Manufacture
By Tayan B. Patel
September 18, 2019
In a case of first impression, the Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”...
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