Mauricio Uribe

Mauricio Uribe is the Chair of the Data Privacy and Data Protection practice group and the former Chair of the Software/IT and Electrical practice groups at Knobbe Martens.  Mauricio also leads the Open-Source Software/Hardware and Artificial Intelligence initiatives at Knobbe Martens.

Mauricio has extensive experience in comprehensive client counseling in all aspects of intellectual property law. Mauricio is well versed in patent prosecution matters and portfolio development, especially with regard to software, electrical, telecommunication and mechanical technologies.  He has represented a wide variety of clients before the United States Patent and Trademark Office (USPTO) for more than 25 years.  Mauricio frequently counsels clients with regard to trade secret protection and enforcement matters, including enforcement of trade secret under state and Federal trade secret laws.

Technical Applications

Mauricio has detailed experience working with clients in a number of specific industries and technologies.  He has worked closely with software and network infrastructure companies and is well versed in technologies, such as virtualization, network communications, content distribution and streaming, machine learning, distributed ledger and the like.  He has also worked extensively with automotive, recreational vehicle and marine companies on mechanical, electro-mechanical and software technologies and associated manufacturing processes, such as HVAC, interior components, wiring and data buses, inertial control systems, machine vision, autonomous operation and associated data services.  He has also worked with a number of medical device companies on technologies such as respiratory monitoring, cardiological monitoring, diagnostic and electrical therapy, and associated data support services.

Mauricio is an active learner of emerging technologies and associated intellectual property strategies, including, for example, artificial intelligence/machine learning (including generative AI), distributed ledger technology (Blockchain), Web 3.0 (decentralized identity management), non-fungible tokens (NFT), machine vision, autonomous driving, Internet of Things (IoT), virtualization, radio communication interfaces, etc. Mauricio is a thought leader and frequent lecturer/author in various intellectual property topics including patent subject matter eligibility (Section 101), interpretation as means plus function (Section 112), and other topics.  Mauricio is also a frequent lecturer and author on intellectual property topics related to emerging technologies including trade secret protection, copyright registration and licensing.

Licensing Experience

Mauricio has engaged in numerous licensing strategy and license negotiations for various clients. He has extensive experience representing clients with regard to standard essential patent licensing matters and is well versed in case law and licensing models throughout the world. Mauricio has helped clients set up licensing programs, identify and cultivate essential patent assets, develop responses to licensing offers and develop holistic licensing programs. Mauricio is also a frequent lecturer on licensing topics including data privacy and protection, standards essential patents licensing programs, non-disclosure agreements, employment agreements, open-source software, patent valuation methodologies, etc.

Leveraging his seconded experiences and technical background, Mauricio is well-versed in open-source software and open-source hardware legal and business issues.  Mauricio is very familiar with open source licensing models, including identification and compliance with licensing terms.  He frequently advises clients with regard to open-source licensing issues.  He also lectures on open-source software issues.

Seconded Experiences

Mauricio’s business focused approach to client representation leverages more than 8 years of experience as a seconded attorney.  He has served as seconded in-house counsel for Microsoft Corporation, Panasonic Corporation, T-Mobile and Amazon.  Mauricio’s in-house, second experience exemplifies his understanding of business and legal issues facing international companies, how to engage with executive leadership teams, and best practices for engaging with outside counsel.

Due Diligence, PTAB Experiences and Litigation

Mauricio also provides counsel on patentability, due diligence, and comprehensive intellectual property programs including litigation and complex, global patent and technology licensing. He has decades of experience working with clients with regard to infringement analysis and risk mitigation matters and developing business-focused defensive strategies. Mauricio has worked with clients in various software and electrical related technologies with regard to developing and executing strategies for Patent Office litigation before the Patent Trial and Appeal Board (PTAB), focusing on inter partes review (IPR) and post-grant review (PGR) strategies and filings. Mauricio is a lecturer and author on legal opinions and damages, intellectual property due diligence, etc.  Mauricio has also worked in support of a number of litigation/enforcement matters in Federal district courts, the International Trade Commission, and other international enforcement matters.