Professional Background
I am an intellectual property attorney who concentrates on patent prosecution, technology audits, IP transactional due diligence, transactional work including licensing and development agreements, and enforcement.
I’ve focused much of my career on patent portfolio development for computer software- and hardware-related applications and inventions, including software control systems, digital health applications, medical devices/applications, mobile applications, financial software systems, software platforms, vision and detection systems, telecommunications, and wireless and satellite communication technologies. I also have significant design patent experience, developing patent portfolios for consumer electronics, vehicles and fashion wear/shapewear garments.
I also advise companies and nonprofits on copyright, trade secret and proprietary protection of their content, data and graphic designs—including instructional guides, course curriculums, marketing materials and presentations—and assist in identifying trade secret and proprietary information and customizing confidentiality and ownership procedures.
I see IP as a strategic tool to drive innovation and technological developments so clients—such as startups; digital health, medical device and fintech companies; and financial institutions and the like—can expand and defend their competitive positions and realize the highest value from their IP assets.
I am the author of Patent Prosecution: Law, Practice and Procedure (Tenth Edition) and Constructing and Deconstructing Patents (Second Edition), published by Bloomberg Law.
Representative Experience With Emerging Companies
- Handled patent portfolios for startups (small to large) in digital scanning/networking technology, static/dynamic website building, and satellite telephone technology in the United States and globally.
- Assisted TrueFire, an alliance of the world’s leading online music education companies and comprehensive library of guitar instruction, with patent and trademark applications and prosecutions, and general trademark and patent advice.
Area of Focus
- Intellectual property/patent portfolio development transactions, joint development and enforcement
My Advice to Entrepreneurs
- Maintain the confidentiality of your intellectual property, preferably via confidentiality agreements.
- Mark intellectual property content/documentation with proprietary/confidential legends/statements.
- Once an invention is publicly disclosed/offered for sale, you must file a patent application within one year in the United States (but most foreign countries do not provide this one-year grace period—so file before disclosure/sale). The U.S. provisional patent application process to preserve your intellectual property rights while reducing costs.