Nicholas R. Mattingly

Associate

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.

Education

University of Baltimore School of Law, J.D., cum laude
    Intellectual Property Law Journal

University of Delaware, B.S., Electrical Engineering

Bar Admissions

U.S. Patent and Trademark Office

District of Columbia

Virginia

Professional Associations

American Intellectual Property Law Association

American Bar Association

Speaking Engagements and Publications

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

March 22, 2017 | Moderator

When is Enough Enough? Examining Information Disclosure Statements & the Duty of Disclosure to Stay in Compliance & Out of Trouble

AIPLA Webinar

July 20, 2016 | Moderator

Can You Beat the Odds? Strategies for Avoiding & Overcoming § 101 Rejections at the USPTO

AIPLA Webinar

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

July 22, 2015 |  Moderator

Navigating Ex Parte Reexamination and Reissue Applications: The Mechanics of Preparation and Interplay With AIA Post-Grant Proceedings And Litigation

AIPLA Webinar

June 19, 2015

Functional Claiming of Computer-Implemented Inventions in View of Recent Decisions

June 18, 2015

Avoiding the Invocation of Functional Claim Language in Computer-Implemented Inventions

September 25, 2014

Moderator – Charting New Territory: Prosecution and Diligence in the Wake of the AIA

American Bar Association, Section of Intellectual Property Law (ABA-IPL) Webinar

April 16, 2012

Prior User Rights: The Uncertainty Will Cost You

March 11, 2012

Prior User Rights: Rewarding Those Who Don’t Contribute

March 1, 2012

Prior User Rights: The Incentive to Keep Innovations Secret

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