Overview

Patrick Jewik's practice focuses on building strategic patent portfolios for clients, helping clients reduce the risk of patent infringement, and fintech. He has performed freedom to operate studies, assisted with strategic patent acquisitions, and participated in multi-patent licensing negotiations for his clients.

Mr. Jewik has also prepared and prosecuted patent applications in a number of different technologies including semiconductors, medical devices, bioinformatics, business methods, computer software and hardware, chemical compositions, and chemical and biological diagnostic systems. He has successfully prosecuted both inter partes and ex parte reexamination applications and reissue patent applications, and has had many of his prosecuted patents litigated. He has also obtained numerous patents for his clients in less than one year using the U.S.P.T.O.'s accelerated examination and prioritized examination processes.

Mr. Jewik also worked as a patent examiner at the United States Patent and Trademark Office (USPTO) where he examined patent applications directed to superconductors, semiconductors, electroluminescent devices and materials, and circuit boards.

Prior to entering the field of law, Mr. Jewik worked as a process and co-op engineer at IBM Corporation, where he worked in semiconductor manufacturing, circuit board manufacturing and high density magnetic disk research.

Mr. Jewik frequently writes and speaks on different topics in the law. He was recommended by Legal 500 US for Patent Prosecution in 2015 and the three years immediately preceding. Mr. Jewik was also recognized as an "IP Star" in 2017 and the four years immediately preceding by Managing Intellectual Property magazine.

Publications

US Practitioner in an International Patent Portfolio World, Daily Journal, December 1, 2016

Preserving Foreign Filing Options by Abandoning Provisional Applications, Intellectual Property Today, July, 25, 2014

Changing the Rules of the Game: Preissuance Submissions, Law360, January 23, 2012

The Utility Model - An Effective Tool in Global Portfolio Protection, Intellectual Property Today, November 1, 2010

How to Fast-Track Your Patent App, IP Law360, August 25, 2010

Counting (On) Improvements, San Francisco Daily Journal, October 12, 2009

Events & Speaking Engagements

Trade Secret or Patent Protection – Which One to Choose?, January 30, 2018

Declarations Practice in Overcoming Rejections in the PTO, August 8, 2017

Foreign Patent Prosecution Considerations and Strategies from a US Practitioner's Perspective, August 1, 2016

Post Alice Aftermath - The Death of Hundreds of Thousands of Patents, September 9, 2015

Revisiting Obviousness Post- AIA, August 3, 2015

Patent Reissue - Overview and Strategies, August 4, 2014

Utility Models: Petty Patents with a Big Impact, June 11, 2014

Alice Corp. vs. CLE Bank Intl.: The Death of Hundreds of Thousands of Patents?, February 12, 2014

Ex Parte Prosecution - The Third Party Preissuance Submissions, January 29, 2013

Challenging a Patent Application: Preissuance Submissions to the USPTO, August 16, 2012

Minimizing Risk Through Preissuance Submissions Under the AIA, August 6, 2012

Prior Art, Obviousness and the AIA in 2012, July 23, 2012

Trade Secret Protection and a Comparison of Patent and Trade Secret Protections, August 1, 2011

Accelerated Examination, January 27, 2011

US Patent Prosecution and Portfolio Development Strategies, August 2, 2010

The New Age of Intelligent IP, April 27, 2009

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Experience

Represented numerous companies in the financial services, toy, clinical instrument, office products, and semiconductor industries to developing their US and foreign patent portfolios and managed teams of attorneys and agents to execute against strategic portfolio building plans.

Represented numerous clients to obtain patents in the PTO's accelerated examination process to obtain patents in about one year or less concerning Notification Social Networking (U.S. Patent No. 7,668,785), On-Line Authorization in Access Environment (U.S. Patent No. 7,567,920), Security Apparatus Including Attachment Device (U.S. Patent No. 8,042,366), Security Apparatus Including Locking Head (U.S. Patent No. 8,001,812), and Security Apparatus Including Locking Head and Attachment Device (U.S. Patent No. 7,997,106).

Represented a consumer products company in an inter-partes re-examination proceeding brought by a third party requester to invalidate the claims in U.S. Patent No. 6,936,018. All claims were determined to be invalid in view of the prior art by the U.S.P.T.O.'s reexamination unit, and the third party requester appealed the decision to the Board of Patent Appeals and Interferences (BPAI). The BPAI confirmed that the claims of the patent were invalid.

Represented the patentee of a patent directed to a security device for electronic equipment in an inter partes re-examination proceeding against a third party requester. The third party requester attempted to invalidate claims in U.S. Patent No. 6,553,794, as the third party requester was accused of infringing the patent. The re-examination proceeding was favorable to the patentee, and the U.S.P.T.O. determined that all claims were patentable over the prior art submitted by the third party requester.

Expanded the claims in a pending patent portfolio for computer physical security devices for a consumer products company, where such claims were later found to be valid and infringed by various competitors.

Represented an analytics equipment manufacturer as a third party requester in an inter partes re-examination proceeding to invalidate specific claims in U.S. Patent No. 6,599,476. All pertinent claims were determined by the U.S.P.T.O to be invalid.

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Education

University of Houston Law Center, J.D. (1993)

University of Illinois, B.S., Chemical Engineering (1989) with distinction

Admissions

California (1996)

District of Columbia

Court Admissions

U.S. Patent and Trademark Office (1997)

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