Paul Roberts Selected Experience
- 1. Drafting experience: I’ve written over 300 patents and prosecuted well over a thousand applications. In that time, I’ve never had a single application I’ve ever filed go abandoned. A big part of my success rate in obtaining patents for my clients comes from my counseling clients not to file patent applications on technology that cannot be successfully patented. Filing and prosecuting patents is expensive, and if my client’s efforts won’t ultimately be successful, I try to head that problem off as early as possible. Anyone can file a patent application, but it takes a lot of experience to know which technologies are worth protecting, and which ideas can be patented.
- 2. Full patent experience: : whether a client’s concern is licensing, infringement, policing, acquisition, or prosecution, I’ve worked in these areas, and have contacts around the world to provide support both in terms of knowledge and bandwidth to handle large and/or esoteric issues.
- 3. Big Firm Experience:: I have worked for years at two the largest and most renown patent law firms in the US, Hogan Lovells and Foley & Lardner. I’ve learned what works for clients at these companies, and seen areas that can be improved through leveraging a smaller footprint. Protect it! IP is all about delivering big firm quality at small firm efficiency.
- 4. Damages knowledge: I have considerable litigation, patent valuation, and damage economics training — meaning that I know how to write and prosecute claims that yield maximal patent royalties). When my clients find themselves in the cross-hairs of an enforcement proceeding, I can swiftly cut to the brass tacks and find out how much money is at risk and formulate a defense strategy.
- 5. Infringement detection: It’s one thing to get a patent allowed, it’s another to get a patent allowed that has claims that will be infringed by a company’s competitors. With years of practice in reviewing products for infringement, I craft claims with an eye towards reading those claims another company’s products. This knowledge is vital in valuation of the patent, because a company looking to purchase or license the product invariably determines how difficult it will be to determine infringement before filing the complaint. a. I also teach and review client marketing and commercial products to minimize their exposure to patent trolls and their competitors by creating marketing materials that are not sufficient to determine infringement, and teach companies how to make it difficult to reverse engineer their products. b. Where applicable, I show clients how to develop policies to create and protect trade secrets rights in their software.
- 6. Budgeting: patent drafting and prosecution is notoriously difficult to budget because an idea can comprise many different inventions and (thus patents.) I have perfected a strategy that provides clients with transparency and predictability with what a patent application will cost, while providing them the flexibility to make improvements or deductions as their patent budget allows.
- 7. Former Examiner: Simply put, I know how patent examiners think, what motivates them, how to deal with them, and how to get them to allow an application, because I was a patent examiner. I know when to use interviews to the client’s benefit, and how to win at the negotiating table to obtain the broadest claims the law and particular examiner will allow.
- 8. International practice: my practice includes drafting and prosecuting patents in countries around the world, from New Zealand, to Canada, all of Europe, China, India, Korea, Singapore, Columbia, Mexico, to name a few. I have associates around the world that can handle just about any particular patent issue you may have.
- 9. International patent law: I write patent applications that comply both US and International requirements. Each country has different laws, and an application that is sufficient in the US, might not work in Europe. Unless, you write an application that works in all countries you want to protect, your foreign patents might be rejected or harder to enforce.
- 10. Docketing: an international practice requires rigorous adherence to hundreds of country specific laws and thousands of deadlines. I have subscriptions to the most advanced docketing software available, so we know when all actions are due, which facilitates budgeting time and costs, and minimizes errors.
- 11. Technology experience: I am an engineer having a degree in computer science and biomedical engineering from Johns Hopkins University, so I can provide the technical expertise necessary to write quality patents, and understand how patented technology works. Major technical areas include computers, software, surgical tools, RFID, electronics, wireless communications, automotive, and mechanical devices.
- 12.Interplay open source, copyright, and patents: given that software derives from protection through licensing, copyrights, and patents, I’ve studied and worked in the open source field representing some of heavy weight companies including Drupel and Sun Microsystems. I’ve written new open source licenses, handled patent infringement actions against open source products, and strategically used open source for clients to increase public acceptance.
- 13.Medical device law and computers: I’m able to leverage the experience I have in regulatory work including the patent work behind ANDA evaluation, paragraph IV, and 505(b)(2) to improve medical device and drug patents. For example, I can write software patents so that they comply with the security requirements under HIPAA, and am familiar with prosecuting patents on medical devices that require Class 2 and 3 approvals.
- 14. NDA, Software, and Patent Licenses: I’ve written many NDAs, software and patent licenses, including noncompete agreements and vendor/purchase sale agreements. These agreements often arise in the sales or manufacture of patented products and I prepare and revise contracts in these areas.
- 15. Tech Startup Community: I work with numerous DC and New York small business groups and startup organizations. I understand the difficulties and time constraints new business go through, and have a solid network in place to put clients and vendors together. I go the extra distance to make sure my client’s businesses succeed.
- 16. Publications, and Speaking: I have written articles and book chapters on a wide variety of intellectual property areas including patent troll litigation, open source licensing, health and IP Intersection, web privacy, patent damages, and prosecution strategy. I have spoken at various legal conferences including the ABA Annual Meeting and FCBA Bench and Bar. I have held various committee chair positions at these associations including committees on pro bono, cloud computing and software, and open source.