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Gregory Rosenthal

has represented clients in patent matters before the United States Patent Office (USPTO) and European Patent Office (EPO). His experience includes prosecuting patent applications in addition to challenging and defending patents in Inter Partes Review (IPR) proceedings at the USPTO and oppositions at the EPO. He also has represented companies in patent litigation in both the United States and Europe. Greg is currently a senior associate at Davis Wright Tremaine.

Recent Articles by Gregory Rosenthal

Building High-Quality Patent Portfolios in the United States and Europe: Part III – Examiner Interviews

In Part I of this series we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we examined software patents with U.S. and European Patent (EP) family members. Part III builds on Parts I and II and focuses on the value of examiner interviews in the U.S. and Europe.

Building High-Quality Patent Portfolios in the United States and Europe: Part II – Software Patents

In Part I of this series, we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we will focus on software patents with U.S. and EP family members. The number of software related patent applications that are filed at the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO) continues to increase despite heightened scrutiny during examination. Further, U.S. courts and national courts in Europe continue to critically analyze the eligibility of software patents.

Building High-Quality Patent Portfolios in the United States and Europe: Part I – Intervening Prior Art

One ingredient that distinguishes a good patent portfolio from a great patent portfolio can be the synergistic strength of its U.S. and European patent family members. To develop this strength, it is not enough to have a U.S. attorney and a European attorney simply coordinate the procedural strategy for filing an application; rather, the drafter and manager of the application should analyze important issues upfront and prepare a patent application that accounts for the substantive differences between U.S. examination, U.S. courts, European examination, and national courts in Europe.