By virtue of his 37 years’ experience in the US Patent and Trademark Office, Ian is able to provide clients with valuable advice as to the practices and procedures involved in the prosecution of patent applications, as well as post-grant proceedings before the USPTO. Ian also brings to the table his experience from representing clients in a large number of the now-replaced inter partes reexamination proceedings.
Ian’s practice focuses on patent prosecution, with primary emphasis on proceedings before the Patent Trial and Appeal Board, such as ex parte appeals and inter partes reviews, as well as appeals to the Court of Appeals for the Federal Circuit. Having served both as a patent examiner and vice chairman of the Board’s predecessor, the Board of Patent Appeals and Interferences, as well as an Administrative Patent Judge on that Board, he is well positioned to apply his knowledge and insight of how the Board operates and approaches various issues.
During his tenure at the USPTO, Ian also served as Chairman of the Board of Patent Interferences, in which capacity he was involved in deciding many patent interference proceedings. This gave him a thorough background in the conduct of inter partes proceedings before the USPTO, which he is able to put to good use for his clients.
- Author, Three Years of Interference Statistics, Journal of the Patent and Trademark Office Society, December 1982; August 1986; May 1989; November 1992; May 1995
- Author, An Overview of Interference Practice, Journal of the Patent Office Society, May 1980
- Author, Recent Developments in Patent Interference Procedure, Southwest Legal Foundation Patent Law Annual, 1976
American Bar Association; Patent and Trademark Office Society
Any result the lawyer or law firm may have achieved on behalf of clients in other matters does not necessarily indicate similar results can be obtained for other clients.
- Lead counsel for a French aluminum producer in an inter partes reexamination proceeding involving an aluminum alloy patent owned by a leading US company, resulting in invalidation of all the claims of the patent by the Patent Trial and Appeal Board (PTAB).
- Represented a centrifugal pump manufacturer in defending its patent against an attempted invalidation in an inter partes reexamination proceeding. The patent was held valid by the PTAB.
- Represented an individual requesting inter partes reexamination of two patents owned by a leading construction equipment manufacturer. The patents were both held invalid.
- Represented a large packaging company in an inter partes reexamination of one of its patents covering cartons which were being manufactured. The PTAB’s decision that a number of the claims were patentable was affirmed upon appeal to the Court of Appeals.
- In three separate appeals to the PTAB, obtained reversals of the patent examiner’s rejections of claims in three related patent applications covering various aspects of carton construction.