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Philip Nelson is a partner in the Orange County office. Mr. Nelson’s practice emphasizes strategic patent protection, including patent prosecution and litigation. He works with clients in various industries to better protect their valuable intellectual property by strategic patent filings, strong agreements, and effective allocation of legal budgets. His background in physics has proved useful as he works directly with inventors in the research and development arms of companies to consider and achieve the company’s intellectual property goals throughout the business cycle. His clients include companies involved in medical, optical, semiconductor, electrical, and computer research and technologies.
Mr. Nelson's recent practice has emphasized negotiation with the U.S. patent office for patent procurement, although he has also participated in patent enforcement at trial and in multi-party proceedings before patent office judges. He lectures and writes on recent developments in U.S. patent law, including changes under the America Invents Act, the U.S. Supreme Court's interest in patent law and patent subject matter eligibility. His approach to patent prosecution emphasizes personal interviews with patent office examiners and use of expedited programs to advance prosecution. He has had success in building and managing complex patent portfolios and advising on major technology-driven acquisitions for several clients.
Mr. Nelson joined the firm in 2003 and became a partner in 2009.
Clerk Experience
Extern to the Honorable Judge Randall R. Rader at the Court of Appeals for the Federal Circuit, 2002.
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, 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
US Patent Office Updates – Trends and Changes in View of the USPTO’s “Revised” Guidance on Patent Eligible Subject Matter (January 2019)