Alan Minsk

E:  Alan.Minsk@fisherbroyles.com

T: (425) 749-1530

Palo Alto Office

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Practice Areas:

  • FinTech and Blockchain
  • Intellectual Property
  • Patent Prosecution
  • Patent Portfolio Strategy

Bar Admissions:

  • California
  • U.S. Patent & Trademark Office

Education:

  • Harvard Law School, J.D., 1991
  • University of California, Berkeley, B.A., Astronomy, 1979
  • University of California, Berkeley, M.A., Physics, 1981 

Corporate Experience

  • Openwave Systems, AGC and Chief Patent Counsel
  • NetSuite – virtual Chief Patent Counsel

Large Law Firm Experience

  • Limbach and Limbach
  • Coudert Brothers
  • Kilpatrick Townsend and Stockton
  • Lane Powell

Alan is a Patent Counsel and Patent Strategist with both law firm and in‐house experience. He works with clients ranging from start‐ups to publicly traded companies to help them develop and implement strategies for protecting their intellectual property, and to address issues that arise in the course of their business operations. He has extensive experience in building and managing high value patent portfolios based on complex technologies. He also assists clients to design and implement in‐house Patent Programs, including a program’s infrastructure and processes.

Alan works with executive, scientific, engineering, and product management personnel to identify innovations in a client’s products and services and to develop an appropriate protection strategy, taking into account long term business objectives, budget, and the competitive environment. He has also pioneered the delivery of patent related services using a “virtual” patent counsel model that has proven to be both cost-effective and very valuable to clients. In addition to patent program and patent portfolio management, as part of this type of role he is often asked to participate in invention mining or brainstorming sessions with engineers and product development personnel.

Alan provides a range of legal services including:

  • Identifying potential innovations in a client’s products and services and determining an effective strategy for protecting those innovations;
  • Patent application drafting and patent procurement;
  • Patent portfolio evaluation and strategies for increasing the value of patent portfolios;
  • Due diligence for purposes of product clearances, mergers, acquisitions and pre-litigation risk assessment;
  • Strategically focused patent portfolio development and management;
  • Establishing and administering in-house patent programs for clients; and
  • Serving as a “virtual” in-house Patent Counsel and adviser to company executives.

Alan has experience in protecting technologies that include:

  • Electronic payment systems and mobile payment applications;
  • Network security and detection of malicious messages;
  • Mobile device user interfaces and wireless data services;
  • E-commerce business models;
  • Applications of machine learning techniques;
  • Virtual reality/augmented reality platforms;
  • Natural language processing (NLP);
  • Software as a service (SaaS) business models;
  • Messaging systems;
  • Search methods;
  • Imaging arrays;
  • Radar systems and radar signal processing;
  • Signal and image processing methods (including the use of convolutional neural networks);
  • Hybrid powered aircraft and related systems;
  • Applications of neural networks;
  • Adaptive control systems;
  • Electro-optical devices (e.g., optical computers); and
  • Graph Databases and Ontologies.

Alan’s clients have included Visa, Amazon, NetSuite, Zuora, Micron, National Semiconductor, Pixar, Jawbone, The Allen Inst. for AI, The Allen Inst. for Brain Science, G2 Web Services, Nordstrom, Helpshift, and Proofpoint.

As an engineer prior to attending law school, Alan was a radar system analyst and developed mathematical models of infrared and optical detection systems.

Publications

  • “The Benefits of Using a “Virtual” Patent Counsel,” Intellectual Property and Technology Law Journal, Vol. 31, No. 8, August 2019
  • “Developing a Patent Portfolio That is a Strategically Valuable Business Asset,” The Licensing Journal, Vol. 38, No. 8, Sept. 2018
  • “Building a Valuable Patent Family Using the Technique of Functional Deconstruction,” Lane Powell’s Beyond IP Law (Feb. 24, 2016)
  • “Selecting the Appropriate Patent Counsel and Why It Matters,” Lane Powell’s Beyond IP Law (Feb.5, 2016)
  • “Jawbone Successfully Leverages Patent Portfolio as Collateral in Fund Raising Efforts,” Lane Powell’s Beyond IP Law (Jan. 27, 2016)
  • “A Key Obstacle to Implementing a Patent Strategy and One Way to Overcome It,” Lane Powell White Paper (Dec. 23, 2013)
  • “Patent Protection as Investment and Insurance,” Corporate Counsel magazine (May 6, 2013)
  • “Is There Justification for Greater Transparency in Patent Transactions?” Patently‐O blog, Guest Post (March 21, 2013)
  • “Innovation, Development and the In‐House Patent Program,” Law360 (Dec. 10, 2012)
  • “Protect Your Company — And Increase its Value with a Strategic Patent Portfolio,” Seattle Business Magazine (Oct. 2012)
  • “Old Model: Patents Protect Products. New Model: Patents Themselves Are Products,” Forbes CIO Central (June 1, 2012)
  • “The Patentability of Algorithms: An Update on the Status of the Current Doctrine,” 9 Santa Clara Comp. & High Tech. L.J. 233, (1993)
  • “The Patentability of Algorithms: A Review and Critical Analysis of the Current Doctrine,” 8 Santa Clara Comp. & High Tech. L.J. 251, (1992).