Philip M. Nelson

Philip Nelson counsels clients in all stages of growth, from startups to established public companies. To jump-start young portfolios, Mr. Nelson pioneered use of special programs to cut through red tape for rapid patent allowance. For those wanting to preserve options at minimal cost, he has a tested protocol. He especially enjoys laying sophisticated patent minefields, protecting core assets with an eye to the future concept and product pipeline. No matter when he joins the team, he quickly grasps the technology and points to the best options to support the business.

Mr. Nelson builds value for investment and acquisition by working with company visionaries and scientists to describe and protect their ideas. Although the patent office likes to say “no,” he works through the objections, often speaking to patent examiners in person to negotiate for better claims. Collegial persistence and technical tutorials tend to persuade examiners, getting them to “yes.”

Mr. Nelson drafts and negotiates technology agreements and advises on big-picture strategy. When opposing diligence counsel is just pasting in a pat phrase from a template, he uses his experience from the trenches (prosecuting, negotiating, and litigating) to correct the meaning and serve his clients.

Mr. Nelson advises on contested matters, drafts litigation briefs, and works closely with litigator colleagues. He negotiates with his clients’ adversaries to avoid suit or improve litigation positions. When a competitor claimed to own his client’s invention in chemistry lab instruments, he won three patent office “interferences”—and three Federal Circuit appeals—to preserve his client’s ownership rights. He handles complex patent office trials such as interferences, derivations, and inter-partes reviews. He has been handling reexaminations and inter-partes reexaminations since before they were cool (before the America Invents Act popularized Board proceedings).

His physics background and widely varied experience at a top intellectual property boutique for 20 years has created a sophisticated advocate for his clients. Mr. Nelson looks forward to helping you assess the field, build your defenses, close your deal, and rain fire on your IP problems and adversaries.

Clerk Experience

Extern to the Honorable Judge Randall R. Rader at the Court of Appeals for the Federal Circuit, 2002.