Philip Nelson counsels clients in all stages of growth, from startups to established public companies. To jump-start young portfolios, Mr. Nelson pioneered use of special programs to cut through red tape for rapid patent allowance. For those wanting to preserve options at minimal cost, he has a tested protocol. He especially enjoys laying sophisticated patent minefields, protecting core assets with an eye to the future concept and product pipeline. No matter when he joins the team, he quickly grasps the technology and points to the best options to support the business.
Mr. Nelson builds value for investment and acquisition by working with company visionaries and scientists to describe and protect their ideas. Although the patent office likes to say “no,” he works through the objections, often speaking to patent examiners in person to negotiate for better claims. Collegial persistence and technical tutorials tend to persuade examiners, getting them to “yes.”
Mr. Nelson drafts and negotiates technology agreements and advises on big-picture strategy. When opposing diligence counsel is just pasting in a pat phrase from a template, he uses his experience from the trenches (prosecuting, negotiating, and litigating) to correct the meaning and serve his clients.
Mr. Nelson advises on contested matters, drafts litigation briefs, and works closely with litigator colleagues. He negotiates with his clients’ adversaries to avoid suit or improve litigation positions. When a competitor claimed to own his client’s invention in chemistry lab instruments, he won two patent office “interferences”—and a Federal Circuit appeal—to preserve his client’s ownership rights. He handles complex patent office trials such as interferences, derivations, and inter-partes reviews. He did reexaminations and inter-partes reexaminations back before they were cool (before the America Invents Act popularized Board proceedings).
His physics background and widely varied experience at a top intellectual property boutique for almost 20 years has created a sophisticated advocate for his clients. Mr. Nelson looks forward to helping you assess the field, build your defenses, close your deal, and rain fire on your IP problems and adversaries.
Extern to the Honorable Judge Randall R. Rader at the Court of Appeals for the Federal Circuit, 2002.
Quoted in, "How counsel balance USPTO and court edicts on Section 101," Published by Managing IP (March 2021)
Editor, Knobbe Martens Section 101 Blog
Co-Author,"101 Patent Reform Progressing in Congress" (May 2019)
Big Picture on Software Patent Eligibility: The Forces at Work (January 2019)
Should Medical Device Companies Be Toasting A New Year’s Regulation? (January 2019)
Co-Author, "New 101 Guidance from USPTO - What Does It Change?" (January 2019)
Co-Author, "Will New PTO Guidance Be The Antidote to Alice In The Medical Device Patenting Process?" (December 2018)
Federal Circuit Further Expands the Role of Factual Questions in Section 101 Analysis (October 2018)
Improved User Interface Survives Section 101 Challenges (March 2018)
Legal Alert: Good News for Software Patents? (May 2016)
Co-Author, "The U.S. Supreme Court’s Increasing Involvement In Patent Law," Corporate LiveWire (December 2014)
Co-Author, "Considerations for International Inventions – Foreign Filing Licenses," Guest Blog Post on Patently-O (October 2014)
Final Rules Released for Supplemental Examination – What You Need To Know” (August 2012)
“Congress’ New Invention – An Update to U.S. Patent Law”, Orange County Business Journal (November 2011)
Contributor, Pre-Litigation Patent Enforcement, 2011-2012 ed., Published by Thomson West (October 2011)
Expedited Patent Handling A Priority? (September 2011)
New Prioritized Patent Examination Option - USPTO Will Allow Applicants to Pay for Faster Examination (April 2011)
Data Privacy Blog
- Co-Author, Judge Allows Facebook to Settle Facial Scanning Suit for $650 Million (March 2021)
- Co-Author, Comprehensive, Round Two: Virginia Passes the Second General Data Privacy Law (March 2021)
- Co-Author, Measuring the Reach of GDPR, How Far Is Far Enough? (February 2021)
- Co-Author, California Court Determines the CCPA Does Not Restrict Discovery in Civil Litigation (February 2021)
- Co-Author, Institutions Propose Digital Health Passports During the COVID-19 Pandemic (January 2021)
- Co-Author, EU Recommendations Require Careful Analysis but Offer Few Clear Rules (December 2020)
- Co-Author, Voters Choose Privacy at the Ballot Box (November 2020)
- Co-Author, New York New COVID-19 Testing Mandate Struggles to Balance Traveler Privacy and Public Health (November 2020)
- Co-Author, Amendment to CCPA Harmonizes Data Privacy and Healthcare Information Requirements - Exemptions for de-Identified Patient Information Under AB 713 Address HIPAA and CCPA Standards (November 2020)
- Co-Author, Lessons From the Complaint Against Uber’s Former Chief Security Officer (September 2020)
Speeches & Seminars
Strategic Considerations in Applicant Duty of Disclosure and Information Disclosure Statement (IDS) Submissions - Knobbe Martens Webinar (February 2021)
US Patent Office Updates – Trends and Changes in View of the USPTO’s “Revised” Guidance on Patent Eligible Subject Matter (January 2019)