biography

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 an outside patent counsel model that has proven to be both cost-effective and 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 se...

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  • Corporate Experience
    • Openwave Systems, AGC and Chief Patent Counsel
    • NetSuite – Chief Patent Counsel
  • Publications
    • “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).

Palo Alto

Credentials

Admissions

California
U.S. Patent & Trademark Office

Education

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

Prior Law Firm Experience

Limbach and Limbach
Coudert Brothers
Kilpatrick Townsend and Stockton
Lane Powell

Practice Areas