Duncan Anthony M

Anthony M. Duncan, Jr.



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.

What do you focus on?

Global Intellectual Property Protection and Monetization

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.

Patent Mining and Patent Portfolio Management

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.

Licensing and Enforcement

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.

What do you see on the horizon?

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.

Patents

  • Represented Semiconductor Energy Laboratory Co., Ltd., an R&D specialized company, providing cutting-edge technology to the world, in matters including:
    • Procured a patent application (U.S. 9,991,575), entitled: Power Storage Unit and Solar Power Generation Unit, Minoru Takahashi, Shunpei Yamazaki, Masaaki Hiroki, Kei Takahashi, Junpei MOMO
    • Procured a patent application (U.S. 9,910,285), entitled: Method of Laser Irradiation, Laser Irradiation Apparatus, and Method of Manufacturing a Semiconductor Device, Koichiro Tanaka, Tomoaki Moriwaka
    • Procured a patent (U.S. 10,056,578), entitled: Electronic Device with Secondary Battery, Ryota Tajima, Minoru Takahashi, Junya Goto, Takuya Miwa
    • Procured a patent (U.S. 9,899,660), entitled: Negative Electrode for Power Storage Device, Method for Forming the Same, and Power Storage Device, Nobuhiro Inoue, Sachiko Kataniwa, Kazutaka Kuriki, Junpei MOMO
  • Represented Anglo American Services (UK) Ltd., an investment holding company, in procuring a patent (U.S. 10,124,346), entitled: Process for Recovering Value Metals from Ore, Anthony Owen FILMER, Daniel John ALEXANDER
  • Represented KEPCO E&C, a power plant design and engineering company in South Korea, in matters including:
    • Procured a patent (U.S. 9,847,146), entitled: Anti-Seismic Apparatus for Control Element Drive Mechanisms, Tae Kyo KANG, Yeon Ho CHO, Sung Jun Kim, Jong Sang WON, Sang Gyoon Chang
    • Procured a patent (U.S. 10,192,006), entitled: Simulation Construction Method for The Measurement of Control Rod Insertion Time, Kyoung Ryun Kim, Cheol Shin Lee
  • Represented DoubleU Games Co Ltd., a game development company, in procuring a patent (U.S. 10,147,270), entitled: Jackpot Game Server and Method Thereof to Cooperate Each Other Among the Members, Ga Rham KIM

Why midsize firms run the gamut on diversity

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.

Contact

Anthony M. Duncan, Jr.

Associate

Washington, DC

Phone: 202-585-8336


Fax: 855-670-2081

Howard University School of Law, J.D.

Howard University College of Engineering, B.S., Mechanical Engineering

Virginia

U.S. Patent and Trademark Office

District of Columbia

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