Paul Roberts, Patent Attorney & Engineer

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Overview

As the managing partner of Protect it! IP, LLC, Paul Roberts breaks down the complicated legal, technical, and financial aspects of determining whether to move forward with an invention, and distilling it down into a concise, simple explanation for my clients (or for a jury). In other cases, Paul Roberts has to interpret my client’s high level instructions, and construct specifications and design requirements to have that project completed by companies that require granular level instructions (could be a prototype, software build-out, infringement search, etc.)

Exemplary Clients

In my years of practice, Paul Roberts has represented software companies like Google, EPCglobal, MIT RFID Lab, Hitachi, Apple, Sun Microsystems, Drupel, and Oracle in a wide variety patent matters including defense litigation, patent prosecution, open source licensing, and patent licensing.
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Patents over Coffee
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Legal Philosophy Behind Patent Preparation

As a patent prosecutor, I apply a damages-focused methodology to drafting and prosecuting applications. That is, whereas most prosecutors focus on getting applications allowed or even just filed, my mind is always on the end game, how much is the patent going to be worth to the company filing it. What type of claims will create the most damages? What kind of claims are easiest for detecting infringement? Which ones would be the most difficult or expensive to design around? To me, patents are not just about protecting ideas, they are written to be used as a tool to make money for their owners.

Once protection is realized, I do work with companies and inventors to prototype and market their inventions, and monetize their patents, copyrights, and trademarks through licensing, sale, and litigation. In addition, I counsel companies on how to design around competing patents, and frequently conducts and writes non-infringement analyses, patent invalidity analyses, freedom to operate evaluations, and patentability opinions.
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Work Experience

Patent Examiner

Paul Roberts began my career in patent law as a patent examiner for the USPTO examining patents on surgical robotics, diagnostic tools, and method. Today, he provides counseling on topics ranging from patent licensing and product development to patent valuation and patent preparation. Paul Roberts helps companies determine the viability of a potential product based on related patents of that potential product and use that information in combination with expected profit margins and customer purchase decisions to provide product potential.

RFID Engineer and Patent Agent

Before becoming an attorney, Paul Roberts worked in-house as a patent agent for Checkpoint systems, a worldwide manufacturer of RFID technology. While at Checkpoint, Paul Roberts built new RFID systems for which he was awarded three US patents, prepared and filed patent applications, and provided clearance and infringement opinions.

Law Firm Experience

Paul spent eight years working for three different Intellectual Property law firms before opening Protect it! IP.

  • Foley and Lardner LLP 2013-2011
  • Hogan Lovells 2011-2008
  • Dann Dorfman Herrel and Skillman 2008-2005

Litigation Experience

In Paul’s litigation practice, he has worked on cases involving LCD technology, hot-swap technology, memory shift registers, multi-core processors, database bridge software, power conservation technology for portable computers, encryption systems, surgical vacuum technology, brain scanning technology, and copyright and trade secret infringement cases for proprietary software. Paul Roberts frequently prepares and negotiates patent and copyright licenses, including open source licensing, medical products, and software suits. Through patent counseling, Paul Roberts has helped many companies bring new products to the market through securing patents on their products, assisting in product redesign, negotiating non-disclosure agreement and manufacturing contracts, and enforcement corporate intellectual property.

Patent Prosecution Experience

As a patent prosecutor, Paul Roberts has drafted and prosecuted hundreds of patent applications, in fields such as financial systems, domain name software and digital dashboard technology, security systems, networking technology, Web crawlers and Web spiders, telecommunication for Blackberries, Androids devices, and iPhones, robotics, and memory infrastructure and programming. I have advanced experience in prosecuting patent written applications in Europe, China, Japan, Canada, Israel, India, and Australia, and am intimately familiar with all aspects of the Patent Cooperation Treaty (PCT) (commonly known as the international patent application).

Work-Experience

 


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Education

Rutgers Law School

Rutgers Law School

Paul Roberts graduated from Rutgers Law School magna cum laude, with a GPA of 3.85 while working full time for a Philadelphia law firm. While at Rutgers, he formed the Rutgers Intellectual Property Law association, and also worked as Judicial Extern for the Honorable Chief Judge Sleet in Federal District of Delaware.

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Hopkins

The Johns Hopkins University

Paul Roberts is a graduate of Johns Hopkins University, holding degrees in computer science and biomedical engineering, and regularly provides counseling services in areas such as contracts, licensing, patent prosecution, patent valuation, and patent enforcement. It is from his education at Johns Hopkins, that he based my main practice areas of patent law including: business methods, computers and software, medical devices, electronic security, and mechanical devices.

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Technology

Software Security
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Computer Science

In the computer science field, Paul Roberts has worked extensively with electronic payments software, encryption algorithms and key cards, database design, web software, Android and iPhone applications, search engines, graphic recognition, and natural language processing, including voice recognition software, audio and video compression, and filtering technologies. Paul Roberts is familiar with most software languages such as Visual Basic, C++, Java, Perl, Python, PHP, XHTML, CSS, XML, ASP, Cold Fusion, and Matlab. In addition to computer programming, Paul Roberts focuses on computer architecture and telecommunications, including fields such as blade server design, firewalls, VOIP, TCP/IP, fiber optics, ethernet filtering, switching, routing, and file transfer protocols (e.g., SATA, SCSI, SLI, and PCI Express).

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Bio Medical Engineering

As a biomedical engineer and computer scientist, Paul Roberts frequently works in technical areas that integrate computers and physiological systems such as: computer graphic recognition of cellular morphology and cytology, cellular preparation techniques, flow cytometer systems, cells, medical alert technologies, health information distribution software platforms, health corporate insurance calculation programs, healthcare electronic access key cards, and surgical tool/implant selection software platforms.

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RFID

In the RFID field, Paul Roberts have provided counsel on patent pools, designed royalty-free RFID standards such as Gen 2, tag reader protocol, and many others. He has written policies for RAND licensing, set reasonable and nondiscriminatory licensing for companies such as Intermec, and provided compliance counseling for patent pools such as RFID World and ISO. Paul has intimate knowledge of all critical areas of RFID technology through his hands-on experience with supply-chain patent portfolios owned by Wal-Mart and SAP, and familiarity with leading encryption systems used in RFID such as one way functions and AES.

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