Paul A. Taufer

Paul Taufer is experienced in handling all aspects of domestic and international intellectual property law. 

This includes patent prosecution and litigation; trademark and copyright prosecution and litigation; trade secrets; unfair competition; licensing; infringement; clearance investigation and analysis; interferences; trademark oppositions and cancellations; post-grant review, reexamination and reissue proceedings; product development, mergers and acquisitions; and issues pertaining to inventorship and ownership.

Paul has sophisticated experience in strategic patent prosecution for companies ranging from startups to fortune 500 companies. This includes developing broad and deep ranging patent portfolios covering key products and technologies in the US and abroad. The work also bridges patent prosecution and litigation through comprehensive market evaluations of competitor activity to strengthen patent portfolios and enhance and/or establish positions of infringement.

In addition, Paul has a deep level of expertise in developing tailored strategies for companies of all sizes for how best to monetizing patent portfolios, including through business collaborations, licensing, sale of patents and litigation.

Paul also counsels companies on how best to protect itself from assertions by third parties, including through conducting landscape analysis, freedom to operate assessments and opinions of noninfringement and invalidity to identify and reduce risks of patent infringement.

Paul also has extensive expertise in connection with issues of patent eligibility in the US and abroad, including in connection with both patent prosecution and litigation. This includes strategies to develop patent portfolios that are deemed to be patent eligible as well as being less susceptible to later patent challenges. Similarly, this experience includes evaluations to assess patent eligibility of patents of others and developing strategies for potentially challenging validity in the patent offices or courts. This experience covers a wide range of technologies including software, business methods and financial services where patent eligibility has been a particularly important issue.

Paul has served as trial counsel in domestic and international litigation. He has represented clients in state and federal courts and before the Patent Trial and Appeal Board in post-grant review proceedings, including inter partes review, and in proceedings before the prior Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board in various inter partes and ex parte proceedings at the United States Patent and Trademark Office. Paul's patent litigation experience includes both asserting and defending claims of patent infringement and invalidity. In the US, he has litigated patent cases in the federal courts and in bankruptcy court. Internationally, he has litigated patent cases in Germany and the United Kingdom. The subject matter covered various technologies in the electrical, electro-mechanical, software, business methods and mechanical fields.

Paul has also represented clients in relation to issues of inventorship, including interferences in the United States Patent and Trademark Office. His trademark litigation experience includes asserting and defending claims of trademark infringement in the federal and state courts. In addition, Paul has also represented clients in trademark opposition and cancellation proceedings in the trademark offices in the US, Spain, Germany, the United Kingdom, Japan and Australia. He has litigated copyright infringement actions in the US federal courts and in the United Kingdom. Paul has also advised US and international clients on issues including corporate structuring, research and development, product acquisition and proprietary rights. Paul has extensive experience in multi-party patent litigation, including establishing and managing joint defense groups among counsel for separate defendants, representation of co-defendants, and defending companies in patent infringement actions asserted by patent holding companies or "patent trolls".

Paul handles patent matters for clients in the electrical, electromechanical, mechanical and software technologies, including communications, computer hardware and software, e-commerce transactions, networking and Internet-related patent applications, financial services, stock exchanges, sports betting, climate modelling, business methods, electronic data storage and retrieval, remote actuators, signal regeneration, monitoring devices, electronic controls, access hardware and closure fasteners, gaming, security, fashion, real estate, commodities, energy, aircraft, consumer electronics, foods, lighting, pharmaceuticals, medical devices and procedures, metering, ophthalmology, semiconductors, valve design and operation, pulmonary aerosolizers and inhalers, blood collecting and purification, fuel dispensing, ice generation, roofing materials, packaging and sludge processing