Robert “Bob” Kinberg

Contact:

  • E: robert.kinberg@fisherbroyles.com
  • T: (240) 270-2838
  • M: (301) 346-4505
  • Washington DC Office

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Practice Areas:

  • Intellectual Property
  • Technology

Bar Admissions:

  • District of Columbia
  • U.S. Patent and Trademark Office

Education:

  • The George Washington University Law School, J.D., 1975
  • Washington University in St. Louis, B.S., Electrical Engineering, 1970

Corporate Experience:

  • Power International, Inc., Licensing Executive

Large Law Firm Experience:

  • Venable LLP

Bob has in excess of 30 years experience drafting and/or prosecuting over 2000 patent applications before the U.S. Patent and Trademark Office in diverse electrical, mechanical and physical science technologies in equally diverse fields, including for example, computers; semiconductors; wireless communications; air, sea and space communication/navigation systems; nanotechnologies; sensor technology; optical fiber technology; audio and video systems; high power electron tubes used for communications and microwave systems; high speed electro-mechanical manufacturing equipment; heavy hydraulic industrial systems; metal and plastic extrusion equipment; nonwoven fabric manufacturing; diverse medical devices from pace makers to medical sensing devices to orthopedic devices; printers; ink jet cartridges; automobile systems from transmissions, electronic ignitions and braking systems to auto-aftermarket electronics used in connection with automobile 12 volt batteries; medical and industrial optical and electrical-optical systems; ophthalmic products and systems; various types of armaments from machine guns and tanks to aircraft and missile technology.

Bob has additionally prepared and filed hundreds of design patents that protect the ornamental appearance of a product, independent of the product’s functional aspects.  Bob’s experience includes counseling and drafting opinions for clients on validity and infringement issues concerning patent property and advising clients on new product development, including providing clearance searches and opinions on the right to use such products and providing designing around advice to avoid patent infringement.

Bob’s career started as a Patent Examiner for the U.S. Patent and Trademark Office where he examined patent applications in diverse electrical technologies that were classified confidential and secret by the U.S. military departments as relating to national defense.  Bob subsequently worked as a patent agent and patent agents for the Departments of Navy and Air Force, and the National Aeronautics and Space Administration, where he prosecuted applications on patentable technologies developed by the government and government contractors.

Bob investigated claims of patent infringement against the government and participated as a government defense counsel in a landmark case, involving infringement under the Doctrine of Equivalence brought by Hughes Aircraft against the Government for infringement of a patent covering control of spin-stabilized spacecraft, which case had liability and accounting issues that were ultimately decided by the U.S. Supreme Court.

Bob has years of experience working with foreign patent counsel the world over prosecuting patent applications in foreign countries for U.S. clients as well as prosecuting patent applications in the U.S. made in foreign countries, based on International Applications filed under the Patent Cooperation Treaty or priority filings under the Paris Convention for the Protection of Industrial Property.  Bob has a network of go-to foreign patent counsel all over Europe, the Middle East, Asia, Africa and South America.

Bob’s IP experience extends beyond administrative procurement of patents, including counseling on trademark, copyright and trade secret issues, IP litigation in U.S. Courts and the International Trade Commission.

Presentations & Teaching Experience

Bob was an instructor for a number of years for the Patent Resources Group that prepared students for taking the patent bar required for all attorneys that wish to practice before the U.S. Patent and Trademark Office.

Bob additionally lectured in China as part of a international panel of patent attorneys addressing intellectual property issues for Chinese companies entering the U.S. and other markets.

Publications

  • “Speeding Up the Patent Process Using the Patent Prosecution Highway” (December 7, 2010)
  •  “Tracking the Evolving Abstract Idea Doctrine: How Courts Have Applied the Two-Part Test for Computer-Implemented Inventions post-Alice”, (March 17, 2015)