Tayan B. Patel

Partner

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

Overview

An experienced intellectual property and technology attorney, Tayan Patel focuses his practice on strategic patent counseling, due diligence investigations, global IP portfolio management, licensing and litigation. From startups to Fortune 500 companies, Tayan makes a point to fully immerse himself in his clients' technologies in order to understand their current and long-term business goals. With his strong technical and educational experience in both electrical and chemical engineering, Tayan is able to offer creative solutions to build, monetize and defend his clients' IP portfolios. 

As a former patent examiner, Tayan is skilled at helping clients navigate patent cases through the United States Patent and Trademark Office. His ability to quickly understand complex issues and thoughtfully communicate each client's position before examiners helps minimize the cost and time spent obtaining patentable rights. Post-issuance, Tayan has successfully employed vehicles such as Reissue, Reexamination and Supplemental Examination to strengthen his clients' patents in view of anticipated licensing and litigation activity. Tayan also regularly provides patent opinions to his clients pursuant to their commercial endeavors in a range of technologies. Further, Tayan helps defend his clients' patents before the Patent Trial and Appeal Board (PTAB) and conducts presuit investigations related to district court litigation.

Select Experience

  • Represents a technology company in building intellectual property and licensing out technology related to wireless and optical communications.

  • Represents corporations in the analysis and enforcement of indemnification rights across complex patent infringement litigations, resulting in the recovery of significant monetary amounts.

  • Helped negotiate an IP and technology license agreement for a filter technology on behalf of a U.S. company.

  • Drafted and negotiated a distribution agreement on behalf of a U.S. company seeking to procure and sell goods manufactured by a foreign entity.

More »

Experience

  • Represents a technology company in building intellectual property and licensing out technology related to wireless and optical communications.

  • Represents corporations in the analysis and enforcement of indemnification rights across complex patent infringement litigations, resulting in the recovery of significant monetary amounts.

  • Helped negotiate an IP and technology license agreement for a filter technology on behalf of a U.S. company.

  • Drafted and negotiated a distribution agreement on behalf of a U.S. company seeking to procure and sell goods manufactured by a foreign entity.

  • Helped build a patent program for a midsize company developing technologies related to wireless, optical, telecommunications and cybersecurity. The company has filed more than 50 new patent applications.

  • Successfully argued before the PTAB numerous cases involving technologies such as semiconductors and software modeling.

  • 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 patent opposition and appeal matters, relating to security printing inks, pigments and dyes, over a three-year period.

  • Prepared and negotiated a nonexclusive, worldwide license between a Fortune 500 company and a large German company.

  • Helped manage, on behalf of a Fortune 500 company, a worldwide patent dispute including a European Patent Office opposition proceeding, a validity proceeding before the German Patent Office and an infringement proceeding in German court.

  • Prepared and negotiated a joint development agreement between a Fortune 500 chemical company and a European chemical company.

Recognitions and Memberships

News

Press Releases

Industries

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