Eric T. Shaffer

Attorney

Eric is a patent attorney with an extensive background in computer and electrical engineering, wireless telecommunications engineering, chemistry, polymers and pharmacology. He has written over 400 patents for Hewlett Packard, Xerox, GE, IBM, Samsung, Huawei, and Google. His vast knowledge and experience spans software, semiconductor, wireless cellular telephone, artificial intelligence/machine learning, LED, solar, MRI/CT, printers, medical devices, Internet of things, pharmaceuticals, analog and digital circuits.

Eric served as a Patent Examiner with the USPTO where he examined 300 patent applications, went to the Board of Appeals 26 times, and conducted Examiner initiated re-examinations. Eric also served as in-house Chief IP Counsel where he worked with inventors on a daily basis, managed a high volume of domestic and international patent, trademark, and trade secret portfolios, and performed analysis of patent portfolios during mergers and acquisition due diligence.

Prior to law, Eric was a financial software developer in COBOL, Java, C++, Oracle and SAP software at Hewlett Packard. He also worked as an accountant estimating potential litigation damages.

Patents

  • Eric provides counsel on preparation and prosecution, licensing, re-examinations, freedom to operate, patentability, opinions, patent pooling, and invalidity.

Copyright

  • Eric represents musicians, artists, and photographers in clearances, licensing, fair use, infringement, and catalog monetization.

Trade Secret

  • Eric drafts confidentiality/non-disclosure/non-compete agreements, and institutional know-how knowledge preservation strategies.

Litigation

  • Eric has trial experience in Markman hearings, patent assertions, infringement defense, claim charts, and right to repair.

When Skill Matters

  • Initiated initial litigation appealed in Lexmark, Int. v. Static Control Components, 572 U.S. 118 (2014).
  • Managed foreign counsel in prosecution and litigation in Europe, China SIPO and in 24 counties.
  • Wrote over 300 patent applications in computer, electric, chemical and hard materials areas.
  • Performed ex-parte re-examination to consider prior art discovered in European patent searches.
  • Drafted joint development, confidentiality licensing, and co-op research agreements.
  • Prepared opinions on patentability, right-to-use, patent landscapes and product clearances.
  • Prepared shrink-wrap agreements and opinions regarding Open Source Software licenses.

Distinctions + Awards

  • Battalion Satellite Communications and Encryption Officer, U.S. Army

Related Practices

  • Intellectual Property

Education

  • University of Dayton School of Law, JD

  • Cleveland State University, MS (Chemistry)

  • University of Southern California, MBA

  • Ohio State University, BS (Computer and Electrical Engineering)

  • Ohio University, BS/BS (Wireless Telecommunications Engineering)

  • Lorain County Community College (Welding)

Admissions

  • Ohio

  • United States Patent and Trademark Office

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