Anthony focuses his practice on patent prosecution, trademark and copyright registration and drafting licensing and commercial agreements. Leveraging his mechanical engineering background and more than five years of work experience between the U.S. Patent and Trademark Office (USPTO) and the International Trade Commission (ITC), he also helps resolve patent disputes involving varied technologies including software and hardware, wireless communications, battery design, cloud computing, fibers and optical communication, optical engineering and design and vision and ophthalmic optics.
I help manage and construct global IP portfolios for multi-national corporations across industries, including medical products, cloud computing systems and semiconductor design and manufacturing, among others. When building a portfolio, I strive to minimize my client’s risk of litigation and maximize their potential for revenue generating cross-license agreements with competitors.
I also help monetize my client’s IP. This entails working directly with in-house counsel to build and maintain a competitive portfolio that secures the company’s freedom to operate, provides lucrative licensing opportunities, enhances their assets value proposition and protects their most important technologies.
I counsel clients at length to understand that a well-constructed patent portfolio can maximize revenue through multiple licensing and commercial agreements.
I work directly with inventors and entrepreneurs from around the world to develop innovative concepts and ideas. For instance, in the last five years, I helped a leading Asia-based technology company grow its patent portfolio from fewer than 30 patents to more than 300 newly filed patent applications. I also helped monetize and cross-license more than 300 patents to a competitor for $40M. This process has entailed training and collaborating with my client’s engineers, senior management and in-house counsel to develop more than 400 innovative ideas.
I work with my clients to develop business plan strategies around licensing, patent enforcement and due diligence. In addition, I counsel clients on how to prepare an “invitation to license” correspondence and the possibility of litigating that patent. My systematic approach to due diligence, which entails conducting it at the outset of a company’s licensing activity, further ensures that my client is best positioned to negotiate the most advantageous terms to monetize their portfolio.
While patent portfolios remain crucial to protecting a company’s assets, patent filing expenses, especially in the United States, continue to rise. In order to meet these growing costs, companies will need to engage outside counsel well-versed in organizing brainstorming sessions, invention disclosure review and analysis, filing decisions and monetization decisions. Although building a valuable patent portfolio is expensive and time-consuming, it can help to facilitate a company’s planning of new products, avoid costly litigation and, ultimately, generate new income.
Law360 | August 21, 2017
Washington DC IP counseling and transactions associate Anthony Duncan is quoted in this article about how a law firm’s size affects diversity.
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