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Patent Law Institute 2020: Critical Issues & Best Practices


Speaker(s): Andrew Hirshfeld, Andrew Kessel, Brian Hanlon, Carolyn Kosowski, Christopher J. Maier, Colm J. Dobbyn, Douglas R. Nemec, Erwin Eichmann, Gene W. Lee, Gerald M. Murphy, Jr., Heather M. Schneider, Hon. Bryan F. Moore, Hon. Gregory M. Sleet (Ret.), Hon. Michael A. Hammer, John M. White, Jonathan C. Anderson, Laura Bozek, Laurence J. Bromberg, Lissi Mojica, Mark J. Schildkraut, Prof. David Hricik, Robert J. Spar, Scott M. Alter, Tracy-Gene G. Durkin
Recorded on: Apr. 2, 2020
PLI Program #: 277890

Douglas Nemec is a partner at Skadden, resident in the firm's New York Office.  He has litigated numerous intellectual property cases in a wide range of technologies, from pharmaceuticals and other chemicals to IT and electronics. He has particular experience in life sciences matters, including patent litigation under the Hatch-Waxman Act. Mr. Nemec also is registered to practice before the U.S. Patent and Trademark Office, where he represents clients in proceedings before the Patent Trial and Appeal Board and other matters.


Andrew Kessel serves as Sr. Counsel, IP Litigation at Gilead Sciences, Inc. where he handles litigations, IPRs, and other contested matters in the United States and foreign jurisdictions concerning Gilead’s IP.  Prior to joining Gilead, Mr. Kessel was an associate in the New York office of Paul Hastings LLP, focusing primarily on Hatch-Waxman ANDA litigation for pharmaceutical and biotechnology companies.  Mr. Kessel received a bachelor’s degree in chemical engineering from Northeastern University and a J.D. from Boston College Law School.


Carolyn Kosowski is a Senior Legal Advisor in the Office of Patent Legal Administration at the USPTO.  In this position, she assists in the drafting of rule packages, memoranda, and associated guidance to implement USPTO initiatives and comply with developments in patent law.  Prior to joining the Office of Patent Legal Administration, she was a primary patent examiner and examined patent applications related to network security, cryptography, and business method technologies.  Previously, she worked as a patent agent and attorney for a large general practice law firm in Washington, DC.  Carolyn received her B.S. in Systems Engineering from the University of Virginia and her J.D. from the George Washington University Law School. 


Chris Maier is a registered patent attorney and practices all aspects of patent prosecution and patent litigation, including inter partes review proceedings and ex parte reexamination at the USPTO, international patent portfolio development and management, and opinion work. Chris has experience working across a variety of technologies, including electrical and computer engineering, software, mechanical engineering, and medical device technologies.

Prior to becoming a patent attorney Chris worked at the United States Patent and Trademark Office (USPTO) as a patent examiner. Chris specialized in flat panel display technology as well as associated device driving software and computer control and peripheral devices.

Chris is a frequent lecturer on the latest strategies and trends in intellectual property for both U.S. and international audiences. Chris previously acted as a committee chair for the American Intellectual Property Law Association (AIPLA) and as delegate for numerous AIPLA domestic and international meetings. Additionally, he previously served as a faculty member for the Patent Resources Group (PRG).


Colm is currently General Counsel, Intellectual Property at MasterCard in Purchase, New York. In his current position, Colm has global responsibility for intellectual property (IP) and related technology legal matters for MasterCard. He oversees a team of 15 professionals that handles MasterCard’s trademarks, patents, copyrights, licensing and technology transfers on a worldwide basis. MasterCard’s IP portfolio comprises over 13,000 trademarks in 220 countries and over 3,000 patents and patent applications.

Colm joined MasterCard in 1995 as Vice President and Senior Counsel. Prior to his employment with MasterCard, Colm was previously Senior Counsel with PepsiCo, Inc., where he had responsibility for trademark and related intellectual property matters for PepsiCo’s beverage divisions. Colm previously was associated with the law firms of Skadden, Arps, Slate, Meagher & Flom and Morgan & Finnegan.

Colm has been recognized by a number of industry awards and honors. Colm was named as “In House Counsel of the Year” by the World Trademark Review (WTR) in May 2016 at the International Trademark Association (INTA) Annual Meeting. In May 2015, the MasterCard IP group received the “Financial & Professional Services Team of the Year” award by the WTR. Colm was also named as an “IP Star” by Managing Intellectual Property in 2015 and 2016. Colm is a frequent speaker at IP industry conferences and seminars.

Colm is a graduate of Fordham University Law School in New York City. He has a degree in biological sciences from Bennington College and participated in research at a number of laboratories, including receiving a National Science Foundation research grant. Colm is a member of the New York and patent bars. He is also a member of the ABA and American Corporate Counsel Association (ACCA), and is President of the Westchester/Southern Connecticut Chapter of ACCA (WESFACCA) during 2014 - 2015.


Erwin Eichmann is an intellectual property and technology attorney, providing advice on complex corporate, software, SaaS, outsourcing and fintech transactions, at Goldman Sachs. Previously, he was General Counsel and Chief Business Officer of TheStreet, and Chief Operating Officer and lead of Technology Sourcing for Morgan Stanley, with responsibility for wealth management, private banking, payment processing, fintech, software and SaaS.


Gene Lee is an experienced lead counsel in patent litigations who is known for his thoughtful work and dedication to clients. In addition to patent litigation in the federal courts and the U.S. International Trade Commission, he regularly works on Patent Trial and Appeal Board trials, and also trade secret, copyright, trademark, unfair competition, and licensing disputes. Beyond adversarial matters, he also advises clients on licensing, patent portfolio analysis, and the IP aspects of corporate transactions.

Gene’s work has covered a wide range of technologies, including computer systems and software, telecommunications and wireless communications, medical devices, video games, audio processing, pharmaceuticals, financial services, chemistry, semiconductors and geoscience.

He has represented major U.S. and Asian companies in high-stakes disputes. Gene represented through trial the world’s largest alcoholic beverages company in the first investigation in the USITC pilot program for potential early disposition of cases. He also represented Taiwan’s first innovator drug company in a licensing dispute and supported related litigation in Taiwan regarding ownership of patent rights.

Gene is a Director of the PTAB Bar Association and the NY Intellectual Property Lawyers Association.


Gerald Murphy has practiced in the intellectual property field for over 40 years, mostly in relation to U.S. and foreign patents for biotechnology, biopharmaceuticals, therapeutic antibodies, organic chemistry, chemical engineering, biochemistry and pharmaceutical inventions.  He works mostly with medium to large internal corporations.  In addition to preparation and prosecution of patent applications and related appeals, Mr. Murphy has handled patent reexaminations and has been lead counsel in a numerous inter partes matters at the USPTO such as interferences and Inter Partes Reviews.  He has also been lead counsel in several appeals to the Court of Appeals for the Federal Circuit.

In addition to handling matters at the USPTO, Mr. Murphy counsels clients in various IP matters such as patent validity and infringement.  He has lectured extensively before U.S. and international audiences on U.S. patent law and case law developments. He served as the sole arbitrator in two arbitrations involving patent and licensing issues in the fields of DNA diagnostics and therapeutic monoclonal antibodies and has served as an expert witness in patent infringement litigations and in an arbitration involving a patent license agreement.

Mr. Murphy chairs BSKB's annual Post Grant Bootcamp, an intensive 4 day program on procedures that are available to correct, defend and challenge patents at the USPTO and before the Patent Trial and Appeal Board.

Mr. Murphy graduated from University of Maryland in 1976.  After taking off several years after graduation, he then attended George Mason University School of Law for his J.D. and then attended George Washington University National Law Center where he attained his LL.M.


Heather M. Schneider is a partner in the Intellectual Property Department. Heather’s practice focuses on patent litigation, as well as antitrust issues involving intellectual property. Her litigation experience encompasses an array of technologies, including pharmaceuticals and biologic products, computer software, medical devices, and chemical products. Her practice also includes client counseling on patent issues, as well as intellectual property issues associated with transactional work including licensing, mergers, and bankruptcy.

In the pharmaceutical field, Heather has played a significant role in litigations and appeals for major life sciences companies involving drug products including: erythropoietin (Epogen), dexmedetomidine (Precedex), rotigotine (Neupro), fingolimod (Gilenya), paricalcitol (Zemplar), oxycodone HCI (OxyContin), argatroban (Argatroban Injection), and amlodipine besylate (Norvasc). She was lead counsel in obtaining a preliminary injunction for breach of contract and other claims for a matter involving agricultural fertilizers. In the computer field, Heather appeared before the U.S. and Canadian courts in the Nortel bankruptcy litigation involving the allocation of proceeds from the sale of Nortel's $4.5 billion portfolio of telecommunications patents.


Hon. Gregory M. Sleet (Ret.) joins JAMS after serving 20 years on the bench of the United States District Court for the District of Delaware, including seven years as Chief Judge. During Judge Sleet’s tenure on the District Court bench, he gained deep experience in a number of areas of complex commercial litigation, especially patent litigation involving pharmaceutical patents and a wide variety of other technologies. As a neutral, Judge Sleet focuses his practice on mediations, arbitrations and neutral analysis (case evaluation, mock trial).

Judge Sleet is a sought-after speaker on patent litigation. Select examples of speaking engagements include: RPX, the Rocky Mountain Intellectual Property and Technology Institute, the Sedona Conference, the USC Gould School of Law, the New York Intellectual Property Law Association’s (NYIPLA) symposium on patent litigation, the Practising Law Institute, and ACI.

Beginning in 2006-2007, Judge Sleet served as an adjunct professor, teaching patent litigation, at Rutgers Law School, Widener University Delaware Law School and, most recently, Duke University School of Law. Before taking the federal bench in 1998, Judge Sleet acquired varied experience in civil and criminal litigation and corporate legal work. He served as the United States Attorney for the District of Delaware from 1994-1998. He served as in-house counsel in the legal department of Hercules Incorporated (1992–1994) and as deputy attorney general handling major civil cases for the State of Delaware (1990–1992). Prior to that, he practiced law in Philadelphia for 14 years, six of those as an assistant public defender with the Defender Association of Philadelphia.

ADR Experience

During his 20 years on the federal bench, Judge Sleet presided over and resolved by pretrial ruling, trial, or settlement thousands of complex civil cases involving a wide variety of subject matter, including: intellectual property (pharmaceuticals, medical devices, and various technologies); antitrust; bankruptcy; class actions; business/commercial; pharmaceuticals and medical devices; products liability; and securities and tax.

Representative Matters

Judge Sleet’s civil docket included some of the country’s most complex federal litigation in the fields of Intellectual Property, including:

  • Antitrust: Presided over multi-week jury trial, with extensive post-trial practice involving claims of various Sherman Act violations by the Association of Tennis Professionals (ATP); presided over numerous matters involving claims of monopolization by the misuse of patent rights
  • Class Actions: Presided over numerous class action disputes in a variety of areas, such as securities fraud, actions brought on behalf of consumers and others; frequently presided over approval of final settlement of these matters
  • Multi-District Litigation (MDL): Presided over at least six MDL actions involving a variety of ANDA and other patent claims
  • Patent Litigation: Presided over numerous, frequently multi-week, ANDA trials involving a wide variety of pharmaceuticals, including: Copaxone (glatiramer acetate), the top-selling treatment for multiple sclerosis; Hemlibra, an important drug for the treatment of hemophilia; a drug for the treatment of schizophrenia; and many others; presided over actions involving new and groundbreaking biosimilars (large-molecule drugs) involving such important treatments for cancer as the branded drugs Avastin and Herceptin
    • Presided over many jury trials involving a wide variety of technologies, including: mechanical devices such as in-door refrigerator ice makers; auxiliary power units (small jet engines that power an airliner while it’s docked at the gate); a dispute between major manufacturers of vacuum cleaners over suction power claims; medical devices such as transcatheter heart valves; a seminal invention in the area of knee replacement; electronic devices, computer technology, software design, machines used in the television and film industry that enable the remote creation of content for television news and entertainment and theatrical films; the design of safety features involving products used by babies and toddlers; and the design of feminine napkins
  • Securities
  • Trademark: Presided over jury trial in a false and misleading advertising and unfair competition action which resulted in a large award of compensatory and punitive damages and many other Lanham Act disputes

Honors, Memberships, and Professional Activities

  • NJIPLA Jefferson Medal, 2019 (for exceptional contribution to the field of Intellectual Property)
  • NYIPLA Outstanding Public Service Award, 2014
  • Philadelphia IP Law Association Outstanding Achievement Award in the Area of IP, 2014
  • Member, CPR Judicial and Technology Panels

Background and Education

J.D.; Rutgers School of Law; Camden, NJ; 1976

B.A.; Hampton University; Hampton, Virginia; 1973


Jonathan Anderson is Patent Counsel at Eli Lilly and Company overseeing IP strategy for drug delivery device, connected care, and digital health assets.  In addition to procuring patents in the United States and abroad, Jonathan counsels his client in IP licensing, agreements, due diligences, and freedom to operate analyses.  Prior to joining Lilly, Jonathan was a patent attorney at Faegre Baker Daniels (now Faegre Drinker) law firm where he concentrated his practice on patent procurement, opinion work related to infringement and patent invalidity, and strategic patent portfolio management, primarily in the electrical and software arts.  Jonathan holds a B.S. in Electrical Engineering from Purdue University and a JD from Indiana University McKinney School of Law.  The views expressed during this conference are those of Jonathan and are not necessarily those of Eli Lilly and Company. 


Laura is a senior patent counsel for Koch Companies Public Sector, one of the world's leading makers of tissue, pulp, paper, packaging, building products and related chemicals.  Laura provides client counselling, contract drafting and global portfolio management services for patents and trade secrets for the Consumer Products business.   Prior to joining Georgia-Pacific in 2010, Laura worked as in-house patent counsel for biotechnology and CPG companies, and her early legal experience included patent drafting and prosecution, and pharmaceutical patent litigation as an Associate with Leydig, Voit & Mayer.  Laura is also on the leadership team of the Women in Law Committee of the American Intellectual Property Law Association, committed to creating a community of empowered, connected members that support and celebrate one another.

Education:  Cornell University School of Law, JD 1991; State University of New York at Albany, BS Chemistry 1988, Summa Cum Laude, Phi Beta Kappa.

Bar Admissions:  US Patent Office, 1993; Illinois, 1991.


Mark Schildkraut is Associate General Counsel-IP and Worldwide Cybersecurity Counsel at Becton, Dickinson and Company (BD), a Fortune 500 medical device and instrumentation technology company that develops, manufactures and sells medical devices, instrument systems and reagents.

Mark has responsibility for and leads a team of IP associates that handles intellectual property matters concerning BD’s Pharmaceutical Systems, Diabetes Care, Specimen Management and Biosurgery business units.  These matters include patent and trade secret protection, drafting and negotiating technology and commercial agreements, product clearance and client counseling.

Mark handles BD’s IP litigations across the company, including its patent infringement and trade secret misappropriation cases in the US and abroad, as well as inter partes review (IPR) proceedings.

Mark is also responsible for establishing legal strategy and counsel on trade secrets as well as enforcement issues relating to the infiltration of BD’s information network and product offerings and exfiltration of BD’s sensitive information.  Particularly noteworthy was Mark’s involvement in BD v. Maniar and US v. Maniar, resulting in the guilty plea of two counts of theft and attempted theft of trade secrets.  He has also been involved with criminal prosecutions in Utah and Illinois, as well as civil enforcement in California and China.

Mark has been an associate with BD’s Legal Department since 2005. 

Prior to joining BD, Mark was an associate at Kaye Scholer LLP and Morgan & Finnegan LLP, focusing on patent litigation, IP clearance and prosecution matters.  Mark received his J.D. from Fordham University’s School of Law and a B.S. in Electrical Engineering from the State University of New York at Buffalo.


Michael A. Hammer was sworn in as a United States Magistrate Judge for the District of New Jersey on August 12, 2011.  Before becoming a Magistrate Judge, Judge Hammer was an Assistant United States Attorney for the District of New Jersey for thirteen years.  From May 2006 to August 2011, Judge Hammer served as Chief of the National Security Unit.  In that position, Judge Hammer supervised and prosecuted a variety of counter-terrorism and counter-espionage investigations, including serving as co-trial counsel in a three-month trial against five men who were convicted of conspiracy to murder government personnel.  Judge Hammer also served as a Deputy Chief of the Criminal Division, supervising a wide variety of white-collar and other criminal prosecutions. From 2002 until 2006, Judge Hammer served in the Special Prosecutions Division, handling public corruption investigations and trials.  From 1996 to 1998, Judge Hammer was an associate at McElroy, Deutsch & Mulvaney (now McElroy, Deutsch, Mulvaney & Carpenter) in Morristown, New Jersey, and worked on a variety of commercial litigation matters.  Judge Hammer also clerked for former District Judge Garrett E. Brown and then-Magistrate Judge Stanley R. Chesler.  Judge Hammer graduated from Seton Hall University School of Law, where he was Editor-in-Chief of the Seton Hall Law Review, and the University of Michigan.


Mr. Bromberg joined Morgan Stanley in 2000. He has global responsibility for all intellectual property matters. He is also responsible for legal coverage of market data, strategic investments involving IP, a broad range of transactional matters, and open source software legal coverage.

Prior to Morgan Stanley, Mr. Bromberg was a patent litigator at Morgan & Finnegan (1991-2000) and an electronics designer at Honeywell (1986-1989).

Mr. Bromberg has a J.D. from Columbia Law School and a B.S.E.E. from Tufts University. He is a member of the New York and Massachusetts bars and a registered patent attorney.


Professor David Hricik received his undergraduate degree magna cum laude and Phi Beta Kappa from the University of Arizona, where he majored in English.  He received his law degree with honors from Northwestern University School of Law.  He practiced with Baker Botts and small litigation boutiques from 1988 to 2002, litigating cases primarily involving patent infringement, legal malpractice, and general complex commercial matters. 

In 2002, he joined Mercer University School of Law, where he teaches legal ethics, patent law and litigation, federal civil procedure, and other courses.  In 2012-13, he served as law clerk to Chief Judge Randall R. Rader at the Federal Circuit.  He rejoined Mercer and also became Of Counsel to Taylor English Duma, LLP, where he continues to represent clients in patent and complex litigation.

He was elected to the American Law Institute in 2016.  He has authored the only treatise on ethical issues in patent litigation, and co-authored the only treatise on ethical issues in patent prosecution.  In addition to serving leadership positions on ethics committees with the AIPLA and ABA and serving as an expert witness, he has written dozens of articles and given well over 100 presentations on issues at the intersection of ethics and patents.  His articles and testimony have been adopted by both state and federal courts.


Scott Alter is an experienced intellectual property attorney whose practice focuses on software, electronics, internet, telecommunications, cloud computing, medical device, financial, and semiconductor technologies. A skilled global patent strategist, he also has significant expertise in patent eligibility, joint and indirect infringement, and indefiniteness. In every matter he handles, Scott strives to obtain practical results for his clients.

Scott has served as an expert witness in litigation concerning data encryption technology. Before becoming a lawyer, he worked at IBM as a LAN systems developer and computer programmer. Prior to joining the firm, Scott was a partner in the Colorado office of a national IP law firm.


Tracy-Gene G. Durkin is the practice leader of the Mechanical and Design Practice Group and a member of the Trademark & Brand Protection Practice at Sterne Kessler.  Tracy has a well-earned reputation for excellence in design patent law. In 2018, Financial Times named her as one of the "Top Ten Legal Innovators in North America,” noting her as “a leading authority on design patents.” In 2017, Intellectual Asset Management noted in their annual "IAM 1000" ranking that Tracy "needs no introduction as the country's top design expert." In 2019, WTR editors heralded Tracy for being “as innovative as the products that she protects.” Since 2013, Tracy has been listed annually among Managing Intellectual Property's "IP Stars" for her counseling practice, and in 2013 and 2017, the publication  named her as one of the "Top 250 Women in IP." In 2016, Profiles in Diversity Journal listed her among "Women Worth Watching." A trailblazer, Tracy achieved a Martindale AV Preeminent Peer Rating of 5.0/5.0 in 2011, recognition fewer than 5% of women lawyers have earned, and was named as one of the “Top Women Lawyers in the Northeast.” Since 2017, she has been named among Chambers & Partners' "recognized practitioners" in the "IP Patent Prosecution, District of Columbia category" and by Who's Who Legal for excellence in patents.  In 2018, The Legal 500 recognized Tracy as a "Recommended Lawyer" in the U.S. for assisting clients “with the development and implementation of [] global design patent strategy, including the coordination of patent filings in over twenty countries worldwide." A leader in the legal community as well as the law, Tracy is a past president of the Women's Bar Association of the District of Columbia and the Women’s Bar Association Foundation, and is currently on the board of the Legal Aid Society of the District of Columbia.


As Commissioner for Patents, Drew Hirshfeld manages and leads the patent organization as its chief operating officer. He is responsible for managing and directing all aspects of the organization which affect administration of patent operations, examination policy, patent quality management, international patent cooperation, resources and planning, and budget administration.

During his time as Commissioner, Mr. Hirshfeld has led the Patent business unit by emphasizing both transparency and collaboration.  He has managed efforts to ensure the consistency and reliability of patent grants.  Mr. Hirshfeld has further played a lead role to ensure that the examining corps is provided with updated examination guidance and training. 

Prior to serving as Commissioner for Patents, Mr. Hirshfeld held the positions of Deputy Commissioner for Patent Examination Policy and Chief of Staff to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Mr. Hirshfeld began his career in 1994 as a Patent Examiner, he became a Supervisory Patent Examiner in 2001, and was promoted to the Senior Executive Service in 2008 as a Group Director in Technology Center 2100.

Mr. Hirshfeld received a Bachelor of Science from the University of Vermont, and a J.D. from Western New England College School of Law.


Lissi’s Practice focuses on all aspects of preparing, analyzing and prosecuting post-grant proceedings, including inter partes review (IPR) and covered business method (CBM) proceedings. Lissi’s practice also includes appeals to the Patent Trial and Appeal Board, reissue applications, interference proceedings, patent quality and patent examination matters.

Prior to entering a law firm setting, Lissi served as a Director at the United States Patent and Trademark Office (USPTO), where she started the Central Reexam Unit (CRU). As Director, she oversaw policies, standards and procedures and developed inter partes and ex parte reexamination training for CRU examiners.


Recognized as one of the top patent educators in the United States, John has over 30 years experience in all phases of the patent field. As a Director at Soryn, John is principally responsible for outreach to the technology community and advising Soryn clients on a host of strategic issues.

John began his technical career as a Field Engineer with the Federal Highway Administration specializing in bridge rehabilitation. Later, he worked as a Patent Examiner and the Special Assistant and Speech Writer to the Commissioner of Patents, Donald J. Quigg. Post law school, John founded what would become the largest patent searching and documentation entity in the U.S., supplying the needs of clients across the globe. He also founded the patent law firm, Berenato & White, and a patent education company. After selling the education company to the Practising Law Institute in the mid-90’s, John remained the author and principal lecturer for the course he created.

Since 1995, John has taught 25,000+ fellow patent practitioners in preparation for the Patent Office registration exam. He has also taught more than 400 Patent Examiners patent law and evidence, and has been qualified as a Patent Procedure Expert in several Federal District Court lawsuits. In addition, John served as an Adjunct Professor for the University of Virginia School of Law, and John Marshal Law School and has created numerous patent education programs and publications.

John has examined, written, and prosecuted thousands of patent applications in the United States and around the world.

Born in Bern, Switzerland, John graduated in Civil Engineering from Virginia Tech, and obtained his law degree from George Washington University. He regularly speaks and publishes on a host of patent topics.


Since January 3, 2007 when he retired from the USPTO, Robert (Bob) Spar has been actively providing advice, consultation and training services to the patent bar about patent practices and Office procedures, including, in particular, about recent examination related notices/initiatives, and proposed/final rule changes by the USPTO. He has provided such specialized consultant services via presentations and training workshops, with follow-up e-mails, to patent intellectual property organizations, individual attorneys, patent departments of major corporations and leading patent law firms; and to the patent community in general via presentations at Annual Patent Law conferences and telephonic Hot Topic Briefing webinars for the PLI. He has taught for the PLI in its bar review course, its program on Reissue and Reexamination Strategies and Tactics with Concurrent Litigation, and in its annual PLI programs on prior art/35 USC 102/103.  He also served as an expert witness in patent litigation matters, and provided legal and technical consultation services on reissues, reexamination requests, and patent procedures, practices and issues.

Prior to his retirement on January 3, 2007, Bob had nearly 40 years of service at the USPTO. For the last 11 years, Bob was the Director of the Office of Patent Legal Administration (OPLA, formerly SPLO), under the Deputy Commissioner for Patent Examination Policy. Bob, with OPLA, played a significant and leading role in developing and implementing many major Office rule makings and policy initiatives involving the patent process, and greatly affecting the patent corps and all patent practitioners.

During his tenure in the Office, Bob served in a number of capacities in Patents, holding the titles of Primary Examiner, Supervisory Patent Examiner (SPE), and Special Programs Examiner (SPRE); serving on details to the Solicitor’s Office, the Board of Appeals and Interferences; and in 1978, he was selected for a 1 year Commerce Science and Technology Fellowship to the White House.

He taught extensively at the Patent Academy (including numerous patent examiner initial training (PEIT) sessions, and on 35 U.S.C. 103 – Obviousness); he made many training and informational presentations to examiners, technical support staff, and top patents management; and he made a large number of presentations on proposed, existing and revised PTO practices and policies to state and city patent bar organizations, at conferences of intellectual property organizations, and for the PLI. He helped to create the Form Paragraph manual of the Manual of Patent Examining Procedure (MPEP), and served as its editor for many years.

He received a BME from Rensselaer Polytechnic Institute in 1962, a LLB from University of Baltimore in 1969, is a member of the Maryland Bar, AIPLA (a member of the Rules Sub-Committee), and is admitted to the CAFC.


Brian E. Hanlon is the Director of the Office of Patent Legal Administration (OPLA) at the United States Patent and Trademark Office (USPTO).  Prior to taking his current position, Mr. Hanlon served as the acting Chief of Staff for Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David J. Kappos, and served as the Director of Strategic Planning and Management Council for Under Secretary and Director Jon W. Dudas and acting Under Secretary and Director John J. Doll.  Prior to his work in the Under Secretary’s Office, Mr. Hanlon was the Deputy Director of OPLA.  Mr. Hanlon was also a shareholder at the law firm of Banner & Witcoff, Ltd. where his practice focused on patent prosecution and client counseling on issues relating to both procurement and enforcement of utility and design patents.  Mr. Hanlon began his career as a patent examiner at the USPTO in former Group 3300, now TC 3700.  He received a Bachelor of Science in Mechanical Engineering with Honors from Worcester Polytechnic Institute, and a J.D., Magna Cum Laude, from the Catholic University of America, Columbus School of Law.  Mr. Hanlon is a member of the Bars of Maryland, the District of Columbia, and the United States Supreme Court.


Experience
• USPTO
Administrative Patent Judge
Mar 2012 – Present
Alexandria, VA
• U.S. International Trade Commission
Investigative Attorney
May 2005 – Mar 2012
Washington D.C. Metro Area
Represent the Government in 337 patent litigation.
• Hunton & Williams LLP
Associate Attorney
2002 – 2005
• Fish & Neave, LLP
Associate Attorney
1997 – 2001

Education
• Georgetown University Law Center
Doctor of Law (JD) Intellectual Property Law
1994 – 1997
Activities and Societies: Immigration Law Journal
• Stanford University
Bachelor of Science (BS) Electrical and Electronics Engineering
1986 – 1991
Activities and Societies: Gospel Choir Intermural Soccer Ski Team