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.
Clerk Experience
Extern to the Honorable Judge Randall R. Rader at the Court of Appeals for the Federal Circuit, 2002.
Brigham Young University – J. Reuben Clark Jr. Law School, J.D., Senior Editor – BYU Law Review
Brigham Young University, B.S., Physics, Minor in Mathematics, Student Speaker – University Honors Graduation
State Bar of California
U.S. Patent and Trademark Office
Communications Technology
Fiber Optic Networks
Videoconferencing
Consumer Products & Services
Sporting Goods & Recreation
Electrical, Semiconductor & Computer Technology
Electronics & Semiconductors
Healthcare Information Technology
Software & IT
Energy
Fashion & Beauty
Footwear
Sunglasses
Financial Services & Business Methods
Blockchain & Smart Contracts
Cloud Computing
Data Privacy
Licensing & Indemnification
Open Source
Medical Devices & Procedures
Ablation Technology
AI & Machine Learning
Catheters & Probes
Deep Venous Thrombosis
Dermatology & Aesthetics
Diagnostics
Imaging
Infusion Pumps
Laparoscopy
Orthopedics
Pulmonary
Robotics
Sleep Apnea
Sports Medicine
Surgical Equipment
Ultrasound
Valvular Incompetence
Ventilators
Wound Care
Pharmaceuticals
Personalized Medicine
Transportation & Vehicles
Aerospace & Space Technology
Automotive Transportation & Powersports
Engines & Engine Components
Tires & Wheels
Tools & Equipment
Covered Business Method (CBM)
Design Patents
Due Diligence
Global Portfolio Management
Infringement Risk
Inter Partes Review (IPR)
IP Strategy
IP Transactions and Agreements
Licensing
Litigation
Opinions Counseling
Patent Litigation
Patent Strategy & Prosecution
Patent Trial & Appeal Board (PTAB) Litigation
Patentability
Post-Grant
PostGrant Review (PGR)
PTAB Overview
Tech Transactions
Trade Secret
Trade Secret Protection Advice, Counseling, Employee & Nondisclosure Agreements
U.S. Patent Prosecution
- Board Member of the OC Chapter of the Federalist Society
