US Patent & Trademark Office
12544 High Bluff Drive, Suite 400, San Diego, CA 92130
Pattric counsels clients on many aspects of intellectual property law, including patent litigation as both plaintiff and defendant, as well as intellectual property counseling to protect patents, trademarks, copyrights, trade secrets and licensing of intellectual property assets. He focuses on counseling clients regarding intellectual property including procurement strategies and licensing programs for software implemented technologies. Pattric has extensive experience with strategic patent matters including accelerated patent applications, post grant patent matters including ex parte patent reexaminations, inter partes patent reexaminations, reissue patent applications and interferences. He leads Procopio’s Software practice.
- Successfully handled post grant patent invalidation matters including prosecution before the Central Reexamination Unit, briefing and argument before the USPTO Patent Trial and Appeal Board, and briefing and argument before the Federal Circuit.
- Assist in-house counsel to develop and implement strategic plan for global patent protection of core technology in the US, Europe and Asia.
- Prepared, prosecuted and obtained significant patents in the digital pathology, mesh networking, wireless communications, web analytics and other fields.
- Prepared, filed and prosecuted accelerated patent application resulting in a notice of allowance within thirty days of filing the application and grant of the US patent in under four months.
- Prepared and filed numerous successful ex parte reexamination requests of competitor patents resulting in strategic delay of potential litigation and establishing intervening rights for client.
- Handled ex parte reexamination of client patent asserted in litigation resulting in certification of the originally patented claims and substantial settlement of related litigation.
- Prepared, filed and successfully prosecuted post grant invalidity attack of US patent asserted against client resulting in final rejection and non-certification of originally patented claims and favorable settlement terms for client in related litigation.
- Handled post grant inter partes reexamination of client patents asserted in litigation resulting in certified claims that read on competitor products.
- Handled post grant opposition of client’s European patent in European Patent Office resulting in confirmed claims that read on competitor products.
- Prosecuted reissue patent applications to obtain reissue patent for client including original claims and new claims reading on competitor products.
- Analyzed client accused products in view of competitor asserted patents and prepared non-infringement opinion letter; successfully defended the opinion letter during deposition by opposing counsel in related litigation resulting in very favorable settlement for client.
- Represented defendant in patent infringement lawsuit relating to digital pathology technology resulting in a substantial victory for client and license to extensive patent portfolio.
- Represented plaintiff/counter-defendant in related patent infringement lawsuits in the field of PC Card technology.
- Defended trade secret misappropriation lawsuit resulting in complete dismissal by plaintiff.
- JD, California Western School of Law, cum laude
- BS (Computer Science), Oregon State University, with high scholarship
- Panelist. “Litigating Inventorship: When and How to Change Named Inventors on an Issued Patent,” IP Watchdog, August 30, 2022. Webinar recording.
- Panelist. “Critical Factors for IP Due Diligence,” ACC San Diego All Day MCLE-La-LAW-Palooza, April 26, 2022.
- Co-author. “What Errors Are Correctable? Intent-To-Use Trademark Applications, Part Three,” September 12, 2018.
- Co-author. “Is Your Trademark Application Assignment Proper? Intent-To-Use Trademark Applications, Part Two,” August 7, 2018.
- Co-author. “Is Your Intent to Use Bona Fide? Intent-to-Use Trademark Applications, Part One.” July 16, 2018.
- Legal Lean Sigma Institute, Yellow Belt in Legal Lean Sigma® and Project Management, 2018
- Intel International Science and Engineering Fair, Special Awards Judge, 2011–2018
- Liam’s Fund for Neurosurgery, Steering Committee
- American Intellectual Property Law Association
- The San Diego Intellectual Property Law Association
- Innovations Academy Charter School, Board Member and Chairman (service completed)
- 4S Ranch Little League, Board Member (service completed)
- The State Bar of California, Intellectual Property Law Section Patent Committee (service completed)
- Ludwig, eric. “Naming Inventors on a Patent Application May Be More Important Than You Think,” IP Watchdog, November 12, 2022.
- Hohmeier, Danielle. “Growing Your Firm in 2021: Advice from Top Growing and Emerging IP Firms,” Juristat Blog, March 22, 2021.
- Knaudt, Kamila. “With Additions, Procopio has 50 IP attorneys firmwide,” Los Angeles Daily Journal, July 2, 2020.
- Berg, Lauren. “Procopio Boosts IP Practice in Calif. with 7 Arent Fox Attorneys,” Law360, June 30, 2020.
- Stokes, Samantha. “Procopio Bolsters IP Team With 7-Attorney Group From Arent Fox,” The Recorder (Law.com), June 30, 2020.
- “Virtual Incubator – A Global Connection to Silicon Valley,” LawExchange International Conference, San Diego, CA, September 13, 2014.