"This is one of the best-written drafts that I've ever reviewed!"
an inventor named on 2500+ integrated circuit and semiconductor fabrication patents (2021)."Rare gem I.P. attorney; ... exceeded my expectations."
an optical industry client for patents and trademarks (2015)(2021).
Obtained more than 300 patents for inventors.
84% allowance rate (USPTO average, 2006-2018: 51.34%).
Provoked re-examination of two industry-leading patents. Wrote motions and memoranda to defend trademark infringement accusation at trial and appeal. Wrote infringement and validity motions, and prepared witnesses, for International Trade Commission patent enforcement. Obtained trademarks to protect key products and business identities. Instrumental in shutting down foreign copyright infringement of designer tableware.
We want your business to prosper.We are highly experienced with intellectual property matters, and can help you to obtain patents, trademarks, and copyrights.These can protect your business from competitors.
We can help you with obtaining and licensing intellectual property. Our firm's members are knowledgeable of the legal issues associated with trademarks, copyrights, and patents.In addition to our availability for trademark and copyright matters, we presently handle principally U.S. patents for semiconductor fabrication and devices, artificial intelligence, and heat transfer. Other areas of technical expertise or familiarity include, but are not limited to, waveguides, fiberoptics, wireless communication, gas turbine engines, ophthalmic devices, nuclear reactors, metalforming equipment, cryptography, hydraulics, control systems, ultrasonic inspection, CT scanning, thermoelectronics, epitaxial metal casting, and electric vehicles.
Has operated a nuclear reactor - underwater. Also: More than fifteen years of experience in serving the intellectual property interests of dozens of clients, ranging from a Dow Jones / Fortune 50 international corporation filing thousands of patents to a regional charity finding a new identity to a retired nurse creating an innovative wheelchair design.
• Obtain patents, trademarks, and copyrights.
• Protect trade secrets.
• License patents, trademarks, and copyrights.
• Enforce patents, trademarks, and copyrights.
• Investigate intellectual property matters.
• Previously, I was a “navy nuke.” I learn new things in depth and fast.Legal Experience
Botos Churchill IP Law
New Providence, N.J. (present)
• Prepare, file, and prosecute utility patent applications.
• Target patent claims to competitors' products.
• Prepare, file, and prosecute trademark applications.
• Advise on copyright matters.Otterstedt & Kammer PLLC
Greenwich, Conn. (2016 – 2023)
• Prepared and filed about 35 patent applications per year.
• Prosecuted patents to allowance – about 60 office action responses per year.
• Investigated intellectual property issues related to a change of business name.
• Obtained allowance of two utility patents in three and four months, respectively.
• 90% patent allowance rate.
• Representative technologies: artificial intelligence, neural networks, computer vision, phase change memory devices, semiconductor processing, heat transfer, cryptography, stochastic computing, quantum computing.McCormick, Paulding & Huber LLP
Hartford, Conn. (2007 – 2016)
• Prepared and filed more than 25 patent applications per year.
• Prosecuted more than one hundred patents to allowance.
• Representative technologies: aircraft engines and components, medical imaging, power converters, very heavy vehicle drive train components, solenoid valves, press brakes, fiber composites, firearms, LEDs and semiconductors, appliance control circuits, wheel chairs, operating tables, log splitters, foodstuffs, optics, and electronic locks.
• Negotiated patent, trademark, and trade secret licenses, NDAs, and non-competes.
• Prepared and reviewed other commercial contracts with intellectual property aspects.
• Prepared patent infringement, validity, and clearance opinions.
• Prepared, filed, and prosecuted trademark applications.
• Prepared and responded to patent and trademark demand letters.
• Prepared ICANN UDRP complaints.
• Prepared and filed copyright registrations.
• Non-progressive corridor bi-focal lens with substantially tangent boundary of near and distant visual fields, U.S. Pat. 8,931,898. Obtained patent through Expedited process. Intensive industry-specific licensing efforts.
• Singultus-stopping article and composition, U.S. Pat. 8,563,030. Identified innovative product, and assisted inventor in obtaining patent. Product and inventor received Presidential recognition in 2015.
• Spectacle lens with spherical front side and multifocal back side and process for its production, U.S. Pat. 6,089,713; Progressive multifocal lens and manufacturing method of eyeglass lens and progressive multifocal lens, U.S. Pat. 6,019,470. Attained re-examination of two foundational patents in the field of freeform progressive ophthalmic lenses.
• Certain Muzzleloading Firearms and Components Thereof (International Trade Commission, 2011 – 2012). Patent infringement litigation (plaintiffs). Prepared patent infringement and validity opinions in support of litigation. Assisted in development of expert evidence regarding infringing products and prior art. Participated in motions practice. Attended and prepared witnesses for depositions.
• ISC2 v. Security University (D. Conn. 2012 – 2014 and 2d Cir. 2015). Trademark infringement litigation (defendants). Participated in motions practice and in drafting appellate brief.
• Bruce Kirby Inc. et al. v. Laserperformance (Europe) Ltd. et al. (D. Conn. 2013-2015). Copyright and trade dress litigation (counter-claim defendants). Participated in motions and deposition practice.Nerac, Inc.
Tolland, Conn. 2006 – 2007
• Developed competitive intelligence and business strategy recommendations based on statistical and qualitative analyses of patent and trademark portfolios and landscapes.
• Investigated bona fides of potential counterparties, and capabilities of competitors, on behalf of inventors and Fortune 500 companies.Leadership Experience
United States Navy
2001 – 2006
• Directed and monitored routine, corrective, and emergent maintenance and operations of nuclear submarine propulsion system to achieve tactical and strategic objectives in support of the United States national security interests.
• Safely operated nuclear submarine and nuclear propulsion system in complex tactical and oceanographic environment, in support of national security missions, during Operation Iraqi Freedom (Mar. 2003) and Operation Enduring Freedom (Jan. 2002 – Jul. 2002). Navy Achievement Medal.
• Developed engineering competence regarding electrical, electronic, computational, steam, high pressure air, hydraulic, electromechanical, metallurgic, chemical, nuclear, and radiological systems.Education
University of Connecticut School of Law
2004 – 2010
• CALI Excellence for the Future Award (top of class) in Torts, Contracts, and Advanced Patent Practice.
• Aspen Law & Business Award for achievement in Contracts.
• Intellectual Property specialty certificate.United States Navy
1999 – 2001
• Officer Candidate School. Learned principles of military leadership.
• Naval Nuclear Power School. 1000+ classroom hours of Nuclear Engineering.
• Naval Nuclear Training Prototype. 1200+ hours of study and operating experience in Nuclear Engineering.
• Submarine Officer Basic Course. Learned how to operate, maintain, and fight with a fast attack nuclear submarine.Northeastern University
1994 – 1999
• Bachelor of Science, Mechanical Engineering. High honors. Tau Beta Pi (engineering honors fraternity). Undergraduate honors program.
• Capstone independent research project: Diagnosis of fiber resin composite beam by vibrational analysis.
• Co-operative education (internships):
◦ Mestek (HVAC manufacturing) 1995
◦ General Electric Aircraft Engines (production assembly planning) 1996
◦ LIST AG (highly viscous chemical process equipment design) 1997
◦ Analogic (CT scanners design) 1998
◦ BlazeTech (atmospheric dispersion modeling and ballistic impact modeling) 1999
You Can't Prevent Your Idea Being Stolen
Why Can't I Prevent My Idea Being Stolen?
"Monkey see, monkey do." You just can't keep your idea from being stolen. It's human nature to borrow a good idea, whether from jealousy, greed, admiration, or whatever motive. Any decent marketing plan plays to all of those emotions, which get folks to buy stuff. So not only is there nothing in the world you can do to prevent copying of a genuinely good idea - moreover, your marketing efforts will be encouraging imitators.How Can I Get Rent From an Idea Thief?
One option is to build a big high fence around your idea, the kind of legal barbwire that will snag the pants of an idea thief. This sort of fence (patent protection) typically takes three to four years building. If someone gets hung up in it, you can sue them for damages and seek a court order "enjoining" them from using your idea. Alternatively, you can offer to put in a toll gate - this is called "licensing." If the toll is calculated to be less expensive than the legal risks associated with climbing the fence ("infringing"), and is also a good value for access to the business inside the fence, then you will find willing licensees.However, before investing time and money to build that patent fence, it would be wise to confirm with a patent attorney that your idea really is new, non-obvious, and useable as disclosed. Without meeting those standards, you will not be able to obtain a patent.Any Other Ways to Benefit from Imitators?
Another option is to put a brand on your idea, a unique name or logo that will mark the idea as yours alone. This can be done in parallel with building a patent fence, it can be done quickly, and it can be done as an integral part of your marketing. While branding does not prevent someone else making a knock off product, the fact that your brand cannot legally be on the knock off, at least will make it clear who has the original product. Then your competitors' imitative products may serve as "Free Advertising" for your superior originals.One BIG thing about branding: you should not use someone else's brand. That completely misses the point of building goodwill for your own business, and also steps all over the other person's goodwill. A trademark attorney can be very helpful in figuring out what brand you should develop and what brands you should avoid.What About Copyrights?
This article was written about "ideas." Copyrights protect specific "expressions" of ideas. For example, an idea is that attorneys and clients can connect with each other via a website. The specific design of this website that you are reading, is an expression of that idea. Another idea is that people can protect their businesses using patents (for the ideas that underlie products or services) and trademarks (for the business reputation). This specific article is an expression of that idea, and is therefore protected by copyright. But the ideas in this article cannot be protected by copyright.