Nick Mattingly focuses on patent and trademark prosecution and counseling for a variety of companies, both small and large.  He writes and prepares patent applications in the electrical, mechanical, and software technical fields and has experience in various aspects of infringement, validity analyses, claim construction, and discovery matters.

Nick prides himself in taking a deep dive into a company’s technology and market to understand their vision to develop a plan for protecting their intellectual property that meets the company’s business goals.

Recently, he worked with a startup to develop a patent portfolio that proved to be a key underlying asset for obtaining early round funding.  Nick’s experience includes developing strategies for global intellectual property portfolios and, in particular, has procured patents that are included in licensing cooperatives such as standardization and licensing pools.  

Nick also frequently travels to Japan and routinely gives lectures about updates to patent law and the latest prosecution strategies.  Before going to law school he worked as a registered patent agent and during law school he was a staff member on the University of Baltimore Intellectual Property Law Journal and served as a judicial intern with the Honorable Clayton Greene, Jr. on the Court of Appeals of Maryland.

Nick also mentors students focused on IP law at the University of Baltimore Law School and was selected to be a mentor for the Maryland Tech Council Venture Mentoring Services program.

Nick is also a Certified Information Privacy Professional (CIPP/US) and regularly focuses on privacy and security technology.

nmattingly@mmiplaw.com

SELECT Speaking Engagements and Publications

April 19, 2023 | Speaker
The Intersection of Trademarks and the Metaverse: a US Perspective 
Meeting of the AIPLA IP Practice in Japan Committee and the Japan Trademark Association, Tokyo,
Japan

January 30, 2023 | Speaker
Doctrine of Claim Differentiation
AIPLA IP Practice in Japan Committee Pre-Meeting, Mid-Winter Institute, San Diego,
CA

October 29, 2020 | Featured in Smart Law for Intelligent Machines discussing Artificial
Intelligence
https://blogs.ubalt.edu/lawmag/smart-law-for-intelligent-machines/

January 28, 2020 | Speaker
Attorney-Client Privilege for Communications Between US and Japan for Patent
Prosecution
AIPLA IP Practice in Japan Committee Pre-Meeting, Mid-Winter Institute, Phoenix, AZ

October 22, 2019 | Speaker
Case Law Update on 35 U.S.C. § 101 for Computer-Implemented Inventions
AIPLA Annual Meeting, IP Practice in Japan Committee Pre-Meeting in Washington, DC

April 8 and 9, 2019 | Speaker
Application of Blockchain Technology to IP Law
Joint Meeting of AIPPI Japan, Japan Federation of Bar Associations (JFBA) and AIPLA in Tokyo, Japan
Smart Contract ID: 0xE20a6Aa6B268Ff4a6e158dB6Cab657F47e22b484
https://etherscan.io/address/0xe20a6aa6b268ff4a6e158db6cab657f47e22b484#events
Application of Blockchain Technology to IP Law
Japan Patent Attorneys Association (JPAA) Closed Meeting in Tokyo, Japan
Smart Contract ID: 0xd5c77A647a14126427162AbD999Db21162a65e3F
https://etherscan.io/address/0xd5c77a647a14126427162abd999db21162a65e3f#events

October 23, 2018 | Speaker
Functional Claiming: Updates and Strategic Considerations
AIPLA IP Practice in Japan Committee, Annual Meeting 2018

April 17 and 19, 2018 | Speaker
Tips For Adjusting a Japanese Specification for Filing as a US Specification
Japan Patent Attorneys Association
Tokyo, Japan; Osaka, Japan

January 23, 2018 | Speaker
MasterMine Software v. Microsoft: Indefiniteness Issues When a Claim is Directed to Both an Apparatus and a Method
AIPLA IP Practice in Japan Committee, Mid-Winter Institute 2018

October 17, 2017 | Speaker
Problems That Arise as a Result of Translating Japanese Patent Specifications Into English
AIPLA IP Practice in Japan Committee, Annual Meeting 2017

February 10, 2016 | Speaker
Putting the Fun in Functional Claiming:  §112(f) and Related Indefiniteness Considerations after  Williamson v. Citrix and Nautilus v. BioSig
AIPLA Webinar

June 19, 2015 | Article
Functional Claiming of Computer-Implemented Inventions in View of Recent Decisions

June 18, 2015 | Article
Avoiding the Invocation of Functional Claim Language in Computer-Implemented Inventions

April 16, 2012 | Article
Prior User Rights: The Uncertainty Will Cost You

March 11, 2012 | Article
Prior User Rights: Rewarding Those Who Don’t Contribute

March 1, 2012 | Article
Prior User Rights: The Incentive to Keep Innovations Secret