Michael W. O’Neill, Esq.

Michael W. O’Neill, Esq.

Bar Admissions and Education Florida Bar, Virginia Bar, United States Patent & Trademark Office Registered Patent Attorney, United States Court of Appeals for the Federal Circuit. Foreign registered patent attorney that managed an international company’s international intellectual property department concerning patent, industrial design, and trademark matters. Patent attorney for a multi-national general practice law firm and for a boutique intellectual property law firm. Administrative patent judge for the United States Patent & Trademark Office’s Board of Patent Appeals and Interferences (now PTAB). USPTO patent examiner, electrical engineer. Juris Doctorate from the Catholic University of America, Columbus School of Law 1998. Bachelor of Science in aerospace engineering from the University of Maryland, A. James Clark School of Engineering 1991.

Technical Expertise Obtained, enforced, and defended patents in the following technologies:

Electrical: semiconductor circuits, semiconductor manufacturing, semiconductor wiring substrates, thin films and manufacturing for high-K/metal gate (HKMG) technologies, metal mask substrates and manufacturing for organic electroluminescent displays, mobile phone, wireless, computer networking, computer power supply, AC/DC power converters, credit and debit card anti-counterfeit technology, circuit board fabrication, satellite communications, medical imaging and diagnostic systems.

Software: knowledge base medical applications, financial systems and processing management, and testing of electronic advertisements.

Mechanical, Electro-mechanical, Electro-chemical: automotive technologies (concentrations in fuel cell and hybrid development, fabrication, and components, engine controllers, nickel-hydride and lithium-ion batteries, vehicle speed control systems for self-driving vehicles, sensors for a variety of vehicle systems, monitoring systems for vehicle operation and components, airbag inflation systems, coolant circuits for IC engines and fuel cells, fuel injection and pump systems, electric motors and stators, wiring harnesses, vehicle interior and exterior components, vehicle seat components, steering systems, compressors, cases for transmissions systems, filters and filtration systems, and oil and air separators and air drying systems).

Mechanical: biomedical implants and surgical instruments and systems, bicycle components, heating, ventilation, and air conditioning (HVAC) technology, material handling vehicles such as forklifts, escalators, conveyors, textile weaving machinery, marine, combined metal & plastic molded articles for multiple applications, well drilling, and mining.

Chemical: resin sheet stock materials, hair dye cosmetic compositions, health and beauty products, plating coatings for metal components, food production processing, and metal manufacturing technologies.

Design: automotive parts, printers and printer cartridges, and consumer apparel.

Authorship and Public Speaking

Lecturer, United States Patent Seminar – Responding to patent examiner’s Office actions, July and August 2017, in Nagoya, Osaka, and Tokyo, Japan.

Lecturer, Effective ways to obtain patents from the USPTO – perspective from an administrative patent judge, Japan Intellectual Property Association (JIPA) seminar, February 2017.

Lead-author, “The Federal Circuit’s First Reversal of an Inter Partes Review: What Does this Mean Going Forward in IPR Proceedings?,” Journal of the Intellectual Property Society of Australia and New Zealand Inc (IPSANL), Issue 103, pp. 107-109, December 2015.

Co-author, “What Proxyconn Means for Future Inter Partes Reviews,” IP Law360, July 14, 2015.

Speaker, “Reaffirming the Importance of Evaluating Objective Evidence in the Obviousness Analysis,” 9th Annual Advanced Patent Law Institute developed by the University of Texas School of Law and the George Mason University School of Law hosted by the USPTO, January 23, 2014.

Quoted, Why you may not know who really made Madden NFL, Polygon, July 26, 2013.

Author, End of the Track, Settling Patent Office Reviews, The Patent Lawyer, Issue 2, pp. 21-23 (September/October 2012).

Co-Author, Strategy and the America Invents Act, Managing Intellectual Property (October 2012).

Speaker, “Behind the Scenes at the Board of Patent Appeals and Interferences: Confessions of an APJ,” Patent Lawyers Club of Washington, D.C., June 12, 2012.

Author, Effective Briefing: Observations from a Former APJ, Intellectual Property Today, pp. 26-27, April 2012.

Author, Easing the Dissent’s Concerns in Marine Polymer, IP Law360, April 5, 2012.

Faculty member (former) of the Practising Law Institute (PLI), Prior Art, Obviousness, and the America Invents Act in 2013; Section 103: “Inside the PTO KSR Guidelines.”

Experience

Patents

  • Patents prosecution: drafts, files, and prosecutes patent applications for patent procurement before the United States Patent and Trademark Office (USPTO), Patent Cooperation Treaty (PCT), and Paris Convention rules, in mechanical, electrical, and chemical technologies. Utilizes and manages foreign associates to file and prosecute patent applications in the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO), and the European Patent Office (EPO) in mechanical, electrical, and chemical technologies. Provides expert opinions concerning US patent infringement, patent validity, product clearance, freedom to operate, claim interpretation, and design around.
  • Patent litigation: drafting and reviewing claim charts, invalidity contentions, motions for dismissal for lack of patent eligibility, arguments for claim construction and summary judgment, and litigates post-grant reviews (IPR, CBM, PGR, Derivations) at the Patent Trail and Appeal Board (PTAB).
  • Patent appeals: argues before the U.S. Court of Appeals for the Federal Circuit for both U.S. District Court appeals and USPTO patent and trademark appeals.

Trademarks and Trade Dress

  • Clears potential trademarks and prepares and prosecutes trademark applications both nationally and under the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol).
  • Reviews and guides product labeling, packaging, advertising and promotional materials, and other external communications for compliance with applicable rules and regulations.
  • Advises on the branding of goods and services.

Intellectual property agreements

  • Counsels on complex intellectual property transactions and aspects of IP commercialization efforts such as technology transaction agreements, IP licenses, service or product development agreements, software licenses, software-as-a-service agreements, joint development agreements, collaboration agreements, patent pool and standards agreements, NDAs, partnership agreements, supply agreements, manufacturing agreements, and developer agreements.

IP asset marketplace

  • Performs due diligence on patent and trademark portfolios for merger and acquisition.

Trade Secrets

  • Advises and counsels on trade secret matters and the Defend Trade Secrets Act (DTSA) of 2016.

Copyrights and media rights

  • Composes copyright infringement analysis for computer software.

Government contracting and IP rights

  • Advises and counsels clients on matters involving FAR, DFARS, and FAR/NFS (NASA FAR Supp.) regulations concerning IP rights and responsibilities.

Personal Background A native from Washington DC metro, Mike followed his family to Florida to absorb the endless summer. Mike worked his way through engineering school as a tool and die maker for Beretta USA for the manufacture of the M9 sidearm for the U.S. Armed Forces. In addition, Mike worked as a mechanical engineering technician that built equipment to dissemble the solid rocket motors on the Trident and Sidewinder missiles and dissect and test solid rocket propellant for the Naval Surface Warfare Center’s Indian Head Explosive Ordnance Disposal Technology Division for aging surveillance. As an engineer, Mike worked on projects for deployment of the Block II/IIA constellation of satellites for the global positioning system (GPS) into assigned orbits and the standard positioning service (SPS) signal specification parameters for coverage, service availability, service reliability, and accuracy from the Department of Defense to the Department of Transportation to support the needs of civilian users.