Summary
Overview
Work History
Education
Skills
Affiliations
Languages
Published Law Articles
Timeline
Generic

Daniel Santos

Atlanta,GA

Summary

My law practice involves all areas of intellectual property law including disputes concerning patents, trademarks, trade secrets and copyrights. I counsel clients and render opinions concerning the infringement/non-infringement of issued patents, the validity/invalidity of issued patents, and the design of products and processes to avoid potential patent infringement assertions. I have an AV® PreeminentTM Peer Review RatingSM by Martindale-Hubbell®, a ranking reserved for attorneys whose peers consider them to have the highest level of professional ethics and skill.

I first entered the field of intellectual property as a patent examiner at the United States Patent and Trademark Office (USPTO) after graduating with a Bachelor of Science degree in Electrical and Computer Engineering. As an examiner, I examined patent applications in the electrical imaging arts in an area of technology classified by the USPTO as image analysis. In this area of technology, images are electronically scanned and converted into digital data, which is then processed using combinations of hardware and software to perform various types of analyses on the data, such as fingerprint recognition, retina recognition, facial recognition, character recognition and bar code recognition. After working for two years as an examiner, I moved to Atlanta, Georgia to attend law school in the evening program at Georgia State University. At that time, I was hired by Scientific-Atlanta, Inc. to work as a patent clerk preparing and prosecuting patent applications relating to cable TV set top boxes.

Since graduating from law school, I have worked as an intellectual property attorney focusing primarily on domestic and foreign patent application drafting and prosecution. Over the years, my practice has focused in the areas of electronics, computers, software, telecommunications and optics. Specific areas of technology in which he practices include integrated circuit design and processes, memory storage systems, analog and digital circuit design, error correction, data encryption/decryption, CATV set top boxes, cellular telephones, cellular networks, telecommunications protocols, optical fibers, optical transceivers and radio frequency (RF) technology. In addition to patent procurement, I also do a considerable amount of work relating to patent validity and infringement analyses and opinions. I also have experience in litigating intellectual property issues. I have also acted as an arbitrator/mediator in patent cases. A significant part of my practice also involves performing freedom to practice analyses and opinion drafting.

My clients include large international corporate clients, international law firms, small and mid-size U.S. corporate clients, and individual inventors. I also stay active in the intellectual property community on both the local and national level. I have published several articles and given several speeches on patent issues. I have also appeared on television discussing various issues relating to patents, trade secrets, trademarks and copyrights. I has acted as the chair of the Emerging Technologies Subcommittee on

Nanotechnology of the American Intellectual Property Law Association (AIPLA) and have been involved in panel discussions both as a moderator and as a panelist.

Overview

42
42
years of professional experience

Work History

Patent Attorney, Partner

Smith Tempel Blaha LLC
Atlanta, GA
06.2007 - Current
  • Interpreted client technical documents to prepared provisional and nonprovisional applications for filing in the USPTO.
  • Prepared responses to office actions from the USPTO.
  • Performed noninfringement analyses and drafted noninfringement opinions.
  • Performed freedom-to-operate analyses to determine whether clients can practice proprietary technogies without infringing one or more U.S. patents.
  • Evaluated new client technologies for patentability.
  • Performed patent invalidity analysis and prepared invalidity opinions.
  • Negotiated with third parties on behalf of clients concerning licensing agreements and settlements.
  • Managed client portfolios by monitoring deadlines and filing requirements.
  • Researched various legal issues related to patent law, such as infringement, validity, and enforceability.
  • Represented foreign companies seeking protection for their inventions in the United States.
  • Participated in industry events such as conferences, seminars, and workshops to stay abreast of developments in IP law.
  • Assisted inventors in developing strategies to protect their intellectual property rights.
  • Counseled clients on best practices when dealing with potential infringers.

Patent Attorney, Partner

Gardner Groff PC
Atlanta, GA
01.2003 - 05.2007
  • Interpreted client technical documents to prepared provisional and applications for filing in the USPTO.
  • Prepared responses to office actions from the USPTO.
  • Performed analyses and drafted opinions.
  • Performed freedom-to-operate analyses to determine whether clients can practice proprietary without infringing one or more U.S. patents.
  • Evaluated new client technologies for patentability.
  • Performed patent invalidity analysis and prepared invalidity opinions.
  • Negotiated with third parties on behalf of clients concerning licensing agreements and settlements.
  • Managed client portfolios by monitoring deadlines and filing requirements.
  • Researched various legal issues related to patent law, such as infringement, validity, and enforceability.
  • Represented foreign companies seeking protection for their inventions in the United States.
  • Participated in industry events such as conferences, seminars, and workshops to stay abreast of developments in IP law.
  • Assisted inventors in developing strategies to protect their intellectual property rights.
  • Counseled clients on best practices when dealing with potential .

Patent Attorney, Partner

Thomas Horstemeyer LLP
Atlanta, GA
08.1996 - 12.2002
  • Interpreted client technical documents to prepared provisional and applications for filing in the USPTO.
  • Prepared responses to office actions from the USPTO.
  • Performed trademark and unfair competition litigation.
  • Performed analyses and drafted opinions.
  • Performed freedom-to-operate analyses to determine whether clients can practice proprietary without infringing one or more U.S. patents.
  • Evaluated new client technologies for patentability.
  • Performed patent invalidity analysis and prepared invalidity opinions.
  • Negotiated with third parties on behalf of clients concerning licensing agreements and settlements.
  • Managed client portfolios by monitoring deadlines and filing requirements.
  • Researched various legal issues related to patent law, such as infringement, validity, and enforceability.
  • Represented foreign companies seeking protection for their inventions in the United States.
  • Participated in industry events such as conferences, seminars, and workshops to stay abreast of developments in IP law.
  • Assisted inventors in developing strategies to protect their intellectual property rights.
  • Counseled clients on best practices when dealing with potential .

Patent Attorney

Deveau Colton and Marquis LLC
Atlanta, Georgia
08.1991 - 08.1996
  • Interpreted client technical documents to prepared provisional and applications for filing in the USPTO.
  • Prepared responses to office actions from the USPTO.
  • Prepared briefs and pleadings in patent, trademark and copyright litigation.
  • Performed analyses and drafted opinions.
  • Performed freedom-to-operate analyses to determine whether clients can practice proprietary without infringing one or more U.S. patents.
  • Evaluated new client technologies for patentability.
  • Performed patent invalidity analysis and prepared invalidity opinions.
  • Negotiated with third parties on behalf of clients concerning licensing agreements and settlements.
  • Managed client portfolios by monitoring deadlines and filing requirements.
  • Researched various legal issues related to patent law, such as infringement, validity, and enforceability.
  • Represented foreign companies seeking protection for their inventions in the United States.
  • Participated in industry events such as conferences, seminars, and workshops to stay abreast of developments in IP law.
  • Assisted inventors in developing strategies to protect their intellectual property rights.
  • Counseled clients on best practices when dealing with potential .

Patent Examiner

USPTO
Crystal City, VA
08.1989 - 08.1991
  • Examined patent applications in the electrical imaging arts in an area of technology classified by the USPTO as image analysis, Class 382.

Field Artillery Cannon Crewmember

U.S. Army Recruiting Command
Fort Sill, OK
08.1982 - 08.1984
  • Assisted in setting up firing positions and camouflage techniques.
  • Verified accuracy of survey data prior to establishing gun positions.
  • Prepared reports on performance of weapons systems during exercises or drills.
  • Communicated with other units regarding movement, location, and status of personnel and equipment.
  • Loaded, unloaded and prepared ammunition for firing.
  • Provided instruction on the use of weapons systems to new personnel.
  • Operated communications equipment to coordinate fire missions.

Education

J.D. -

Georgia State University College of Law
Atlanta, GA
06-1995

Bachelor of Science - Electrical And Computer Engineering

Clemson University
Clemson, SC
07-1989

Skills

  • Intellectual Property Law
  • Legal Interpretation and Adaptation
  • Legal Research and Review
  • Establishing Effective Relationships

Affiliations

  • Licensed Boat Captain on 20 ton boats.
  • Play guitar.
  • Physical fitness.
  • Have studied Spanish extensively.

Languages

Spanish
Limited
German
Elementary

Published Law Articles

· "A New Frontier in Patents: Patent Claims to Propagated Signals," The John Marshall Journal Of Computer and Information Law, Vol. XVII, Number 1, March 1999.

· "What Does 'Means' Mean," Intellectual Property Today, October 1997.

· "'Means-Plus-Function Can Cause Drafting Angst," The National Law Journal, October 1997.

· “Dismantling The Atomic Bomb Of Patent Defenses,” Intellectual Property Today, July 2011.

Timeline

Patent Attorney, Partner

Smith Tempel Blaha LLC
06.2007 - Current

Patent Attorney, Partner

Gardner Groff PC
01.2003 - 05.2007

Patent Attorney, Partner

Thomas Horstemeyer LLP
08.1996 - 12.2002

Patent Attorney

Deveau Colton and Marquis LLC
08.1991 - 08.1996

Patent Examiner

USPTO
08.1989 - 08.1991

Field Artillery Cannon Crewmember

U.S. Army Recruiting Command
08.1982 - 08.1984

J.D. -

Georgia State University College of Law

Bachelor of Science - Electrical And Computer Engineering

Clemson University
Daniel Santos