| JOHN T. MCNELIS |
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| Emphasis |
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Strategic Intellectual Property Counseling |
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Patent Prosecution and Counseling |
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Intellectual Property Diligence and Audits |
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Patent Reexaminations |
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| Profile |
Mr. McNelis is Chair of the Patent Group and a former Managing Partner of Fenwick & West LLP. He represents a wide range of high technology venture capitalists and companies from privately held start-ups to publicly traded corporations and advises these companies on procedures for protecting their intellectual property through patents, copyrights, trademarks, and trade secrets. He also counsels these clients on various techniques to enforce their intellectual property rights.
Mr. McNelis' practice emphasizes strategic counseling on intellectual property matters including intellectual property diligence and audits, patent counseling, patent reexaminations, and patent prosecution for computer software and hardware technologies and business methods. His experience includes such technologies as Internet applications, wi-fi, robotics, computer aided engineering test and design, 3 dimensional graphics, optics, ATM communication, speech recognition, microprocessors, power control and memory devices.
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| Education |
College of William and Mary, J.D., 1992 University of Notre Dame, B.S., in electrical engineering with a computer engineering concentration, 1986
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| Admitted to Practice |
Member of the state bars of California and Pennsylvania, a member of the District of Columbia bar and is registered to practice with the U.S. Patent office. |
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| Additional Information |
Mr. McNelis has been honored as a top attorney in the nation by The Legal News, a Northern California “Super Lawyer” and in Madison Who’s Who of Executives and Professionals. He has also been a member of a variety of leading legal organizations including the American Intellectual Property Law Association and the Silicon Valley Intellectual Property Law Association.
Mr. McNelis is a frequent speaker on intellectual property topics and has been an invited lecturer for a variety of hearings and seminars including those sponsored by the Federal Trade Commission (FTC), the American Intellectual Property Law Association (AIPLA), and the Santa Clara Bar Association among other organizations.
Mr. McNelis has co-authored two books on patent strategy and patent law in addition to writing many articles on intellectual property trends and strategies.
Selected Publications:
A Dramatic Year in Patent Law, Aspatore Thought Leadership, Patent Law 2009, Aspatore Books (2008).
Developing the Right Strategy, Inside the Minds, Patent Law Client Strategies, Aspatore Books (2007).
A Powerful Patent Strategy … Provisionally: A provisional application is part of a powerful patent strategy, but only if the provisional application is prepared properly. If the provisional application does not fully and completely describe the invention, it will do more harm than good due to the false sense of security it engenders.
The Damages Trap: While the addition of computer program product claims can increase the number of direct infringers of a patent, the assertion of the computer program product claims may actually decrease the damages to which the patentee is entitled.
Significant Changes in U.S. Patent Laws: A summary of the many changes to U.S. Patent law based upon the Intellectual Property and Communications Omnibus Reform Act (American Inventors Protection Act) of 1999.
A New Defense to Patent Infringement: The American Inventors Protection Act provides a first inventor defense for existing methods of doing or conducting business.
New Designs: Licenses May be Evidence of the Nonobviousness of an Invention: When attempting to overcome an obviousness rejection from the USPTO a patent practitioner can identify licenses and other evidence that demonstrates the commercial success of a claimed invention and then clearly explain the nexus between the evidence and the claimed invention in order to maximize its evidentiary value.
Patent Strategy and Management: A product clearance strategy based on the publication requirements of the American Inventors Protection Act.
U.S. Patent Applications to be Published: The Intellectual Property and Communications Omnibus Reform Act (American Inventors Protection Act) of 1999 required the publication of many U.S. patent applications. |
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