EE INTELLECTUAL PROPERTY ATTORNEY WITH OVER TWENTY YEARS OF EXPERIENCE in patent preparation and prosecution, and intellectual property law. Registration number 33,560. AV “Preeminent” Peer Review rated by Martindale-Hubbell*. Rated “Superb” by AVVO. Rated as a Top Patent Prosecutor by the Patent Research Review, 2011. Ranked in Top 100 attorneys of all types by Spokane Coeur d’Alene Living Magazine, 2011 & 2012. Experienced with semiconductors (drafted and prosecuted 3000+ page patent application on a single integrated circuit), computer law, software related inventions, and inventions involving digital systems and micro-electronics. Prepared and prosecuted hundreds of patent applications.
Malhotra Law Firm. Patent and trademark preparation and prosecution. I accept a limited amount of work for friends and clients who I like who require high quality and rapid turn-around, and who are willing to pay for it. Litigation support for litigators in Texas. Review file histories and consider strengths and weaknesses of potential patent litigation matters. Admitted to State Bar of Texas on May 4, 2007.
Nov. 1994-December 2006:
Intellectual property practice at a well respected intellectual property law firm in Spokane, Washington. Firm clients on whose projects I worked included Micron Technology, Hewlett-Packard Co., VLSI (Philips), Lockheed, and others. Technologies I’ve worked with include software, RF communications, sensors, smart cards, ESD protection, disk drives, tape drives, servo systems, printers, static memory cells, dynamic memory cells, databases, publishing systems, virtual reality, wafer production methods, wafer polishing, antenna diversity systems, marketing systems, electron multipliers, digital clock recovery loops. I’ve also worked on mechanical inventions such as mobile conveyors, upflow clarifiers, etc.
Aug. 1988-Nov. 1994:
Intellectual property practice at Michael, Best & Friedrich, a large general practice law firm in Milwaukee, Wisconsin. Preparation and prosecution of patent and trademark applications for filing in U.S. and abroad, drafting of appeal briefs, patent and trademark search reports and infringement opinions, license agreements, software development agreements, etc. Started firm’s Intellectual Property Update newsletter-was the editor and primary contributor of the Update from its inception until my departure. Firm clients on whose projects I worked included Outboard Marine Corporation, Milwaukee Electric Tool Co., Envirex Co., Rexnord Corp., Quad Graphics, Bemis, Hein-Werner, AOSmith, Harnischfeger Engineers, Inc., Ft. Howard, and others.
Oct. 1987-Aug. 1988:
Patent agent in training at Gowling & Henderson (now Gowling, Strathy & Henderson), a large general practice firm in Ottawa, Ontario with a major practice in intellectual property law. Became very familiar with Canadian practice, with the new Canadian first-to-file system, and with the specialties, qualifications, and fees of various Canadian patent agents and attorneys. Firm clients on whose projects I worked included Sony, Motorola, Black & Decker, Ford Aerospace, and many U.S. law firms.
Sample Post Law School Continuing Legal Education Courses (Not A Complete List):
- Kayton-Drafting Patent Validity & Infringement Opinions in a Sea of Jurisprudential Chaos, October 2006.
- University of Texas-Technology and Computer Law Conference, June 2006
- Washington State Bar Association-Intellectual Property Developments, September 2006.
- Washington and Oregon CLE Forum – Legal Ethics and Professionalism, April 2005.
- Washington State Bar Association – Protecting Intellectual Property
- Spokane County Bar Association – Professionalism and Practice before the Washington Supreme Court, September 2004
- NBI – Successful Judgment Collections in Washing, February 2004
- American Intellectual Property Law Association–Mid-Winter Institute (2002).
- Kayton-Trial of a Patent Infringement Case (2001).
- American Bar Association-8th Annual Summer IPL (2001).
- American Intellectual Property Law Association-Spring Meeting (2001).
- Licensing Executives Society-Winter Meeting (2000).
- Kayton-Software Patents–Procuring and Enforcing (1999).
- International Trademark Association-Annual Meeting (1999).
- Kayton-Advanced Seminar on the Patent Cooperation Treaty (1998).
- Kayton-Basic Patent Infringement Litigation & Appellate Practice (1998).
- Washington State Patent Law Association-European Patent Practice and Community Trademark (1997).
- Oregon State Bar-Pacific Rim Computer Law Institute (1997).
- Washington State Bar-Pacific Rim Computer Law Institute (1996).
- Kayton-Designing Around Valid U.S. Patents (1996).
- Discovery Institute-International Internet Law Symposium (1995).
- Licensing Executives Society-(multiple seminars 1996-2000).
- American Bar Association-Section of Intellectual Property Law-Summer Conference (1996).
- American Intellectual Property Law Association-(multiple seminars 1995-1997).
- Wisconsin Intellectual Property Law Association-(multiple seminars 1993-1994).
Admitted to Washington State Bar on June 2, 1995.
Admitted to Wisconsin State Bar on May 24, 1993, Eastern District of Wisconsin on May 25, 1993, Western District of Wisconsin on June 2, 1993, U.S. Court of Appeals for the Seventh Circuit on June 4, 1993, and U.S. Court of Appeals for the Federal Circuit on September 3, 1993.
JD-Marquette University Law School on May 23, 1993. Graduated in top quarter of class despite working full time while attending law school. Law School Award for Academic Achievement (highest grade in class) for Intellectual Property Practice and Procedure.
Attended William and Mary summer law program in England. Completed courses covering English Legal System, Law and Institutions of the EEC, and Business Law of the EEC.
Passed USPTO patent bar exam on first attempt (35% pass rate for April, 1989 exam).
January 1986-May 1987:
Post Graduate work in Electrical Engineering, major in Controls, South Dakota School of Mines and Technology.
BSEE-South Dakota School of Mines and Technology. GPA: 3.0 in 4 point system. Courses completed include microprocessors, mini and microcomputer applications, digital systems, microelectronics, electronic and magnetic fields, properties of materials, fourier analysis, EE design project, systems analysis, motors, differential equations, statics and strength of materials, rigid body dynamics.
Licensing Executives Society, Spokane County Bar Association, Washington State Bar Young Lawyers Division, Spokane Jaycees, Federal Circuit Bar Association, American Intellectual Property Law Association, American Bar Association Intellectual Property Law Section, Wisconsin Intellectual Property Law Association, Order of the Engineer, Patent and Trademark Institute of Canada, and Institute of Electrical and Electronic Engineers.
Wrote hundreds of patent applications.
For an example of a jumbo electronics patent that issued from an application I wrote and prosecuted, see:
In excellent health. U.S. and Canadian citizenships. Born August, 1963 in Montreal, Canada. Working knowledge of the French language. Further information on request.