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John T. McNelis

Partner, Intellectual Property  

Mountain View 650.335.7133

Overview

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John McNelis 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.

John's practice emphasizes strategic counseling on intellectual property matters including intellectual property diligence and audits, patent counseling, patent post-grant proceedings, and patent prosecution for computer software and hardware technologies and automotive technology. His experience includes such technologies as autonomous vehicles, electric vehicles, Internet applications, wi-fi, robotics, solar energy, cleantech, computer aided engineering test and design, formal design verification, three dimensional (3D) graphics, optics, optical communications, communication protocols, speech recognition, microprocessors, virtual networks, power control and memory devices.

John chaired Fenwick’s patent group and managed the firm as a managing partner of Fenwick & West LLP.

John has been honored as a leader in the field of patent law by a variety of organizations including being recognized as a leading patent attorney in the world by Intellectual Asset Magazine (IAM), in the nation by The Legal News, The Legal 500, and Managing Intellectual Property, and in Northern California by Super Lawyers. He has also been a member of a variety of legal organizations including the American Intellectual Property Law Association and the Silicon Valley Intellectual Property Law Association.

John 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), and the American Intellectual Property Law Association (AIPLA), among other organizations.

John 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.