Michael O’Neill

Michael O’Neill
Of Counsel

A 17-year veteran of the United States Patent and Trademark Office (USPTO), Mike brings his seasoned experience as an administrative patent judge for the Patent Trial Appeal Board (PTAB) to clients of any robust Intellectual Property (IP) and Technology practice.

Mike’s unique skills center largely upon his more than two decades of work in the IP field, translating to an in-depth knowledge of what it takes to survive as a patentee in today’s competitive market economy. He has leveraged vast IP portfolios for global clients through countless design-arounds, reverse-engineering and strategic licensing. Mike is also comfortable marrying legal risks and rewards together with business objectives, relying on shrewd judgment calls and meticulous skills taught through years of work dissecting complex legal issues.

Mike’s practice further includes appellate advocacy; preparing and soliciting patent and trademark applications; advising on intellectual property issues, including risk avoidance and global development and protection of clients’ intellectual property portfolios; commercial transactions; due diligence; and drafting of licensing agreements, opinion letters, nondisclosure agreements, work-for-hire agreements, assignment of intellectual property rights and employment agreements with ownership issues triggering intellectual property rights concerns. He collaborates with clients’ teams of sophisticated technologists, business executives and counsel to ensure that an entity’s most promising inventions are identified and patented.

Mike’s core competencies stem from his domestic and foreign filing and prosecution of patent and trademark applications. He negotiates his client’s interests with sound business acumen to meet critical, oftentimes sensitive, high-stakes “bet the company” business goals and objectives.

Mike’s experience derives from his work involving PTAB post-grant proceedings, including inter partes reviews (IPR), transitional covered business methods (CBM), post-grant reviews (PGR) and derivations. He has been involved in numerous post-grant proceedings, representing both petitioners and patent owners. Mike is adept at counseling in-house senior management and chief IP counsel, outside litigation counsel and expert witnesses to develop effective legal strategies. As a judge, he authored more than 300 reported board opinions spanning diverse subject matters. During his judicial appointment, he developed a strong background in appeals involving biomedical, mechanical, electrical, chemical and business method technologies.

Through his experience as a patent judge, and his years at the USPTO, Mike can advise on matters involving patent litigation strategies, validity, patent as well as trademark practice and procedure. He works with lead litigation counsel to: draft and review claim charts, invalidity contentions, arguments for claim construction and summary judgment; depose and defend expert witnesses; and address all aspects of document review. He coaches litigation counsel in mock trial and appellate settings to make arguments stronger. Mike also provides expert witness services for USPTO patent practice and procedure and is available to render his valuable expert services.

Mike has assisted clients to: create and execute strategies for leveraging current United States’ IP law, and technology assessment and utilization; create new forms of business with IP to expand revenue and to leverage existing business in order to create new structures and joint ventures; and navigate and negotiate agreements relating to all manners of IP. He has worked closely with clients to design and implement IP asset management strategies and processes to capture technology and create value from IP.

Participated case