Justia Legal Services & Lawyers Directory

Jonathan Frieden is a principal in Odin, Feldman & Pittleman, P.C.'s Litigation practice group where he tries a variety of complex commercial disputes and criminal matters. His diverse civil practice encompasses intellectual property litigation, including trademark and copyright enforcement proceedings; the representation of management in employment discrimination claims; the defense of corporations against consumer claims; and a variety of commercial contract disputes.

Mr. Frieden counsels e-commerce businesses in a variety of industries and recently led the team of attorneys representing one of these businesses in its acquisition by a publicly traded company. He is also the author of E-Commerce Law (www.ecommercelaw.typepad.com), a regularly updated discussion of news, trends and legal issues affecting e-commerce businesses.

Mr. Frieden has received national media coverage in recent cases in which his comments, on behalf of his clients, were carried on NBC, CBS, FOX and WTOP News. His arguments and post-trial comments have been quoted extensively in The Washington Post, The Washington Times, and other newspapers across the United States.

Mr. Frieden has twice been named among Virginia's "Legal Elite" according to Virginia Business magazine. His inclusion on this list means that he is among those lawyers recognized by his peers as the best in Virginia. In addition, Richmond Magazine has twice listed Mr. Frieden as one of Virginia's "Rising Stars". Rising Stars identifies the top 2.5 percent of attorneys in Virginia who are under 40 or have been in practice for less than 10 years.

After over 34 years of patent examining, I have retired from the US Patent Office in February of 2007, and have been pursuing related work in the private sector.

I have a Bachelors of Science (1970) and Masters of Science (1972) degrees from Penn State University in Aerospace Engineering.

My primary area of expertise is in the aeronautics and space art. Due to the complex nature of this art, it requires knowledge of many other mechanical and electrical areas of the USPTO. As a patent examiner, I have examined over 5000 patent applications, issued over 3500 patents in the aircraft art and reviewed and responded to over 10,000 application amendments. While at the USPTO I was formally recognized as an Expert in the Aerospace art by a specially appointed review board at the USPTO. Part of this Expert review process required recognition by at least two members of the Patent Office Board of Appeals as to my ability to not only understand the technology but also to properly apply the Patent Laws to such technology and to the patentability of the claimed invention. As a result of this experience I have developed a very detailed knowledge of the majority of the patents in the field of aeronautics and space. I have had details to Quality Review, the Assistant Commissioner of Patents (when the USPTO was involved in fraud questions of patent prosecution), and multiple teaching details to the Patent Examining Academy. I have trained other examiners informally in the art units that I have worked in, as well as through the Patent Examining Academy. My qualification should meet any courts requirements as an expert witness in the Aerospace technology.

Since my retirement in February of 2007, I have worked with a group in assisting them in the start up of a contract operation for the USPTO to classify Pre Grant Patent Applications. My duties with this start up endeavor included assisting in training of the employees in patent classification and search skills. I was also a -trouble shooter- that determined the proper routing of difficult to classify inventions from all technologies of the USPTO. These duties enabled me to broaden my level of understanding to all technology areas of the USPTO. Other duties included researching and looking into other companies in the patent field, who were developing software related to patent searching and the automated classification tools for patents and other documents. I was also charged with reviewing the Quality feedback from the USPTO as it applied to the classifications that were sent to them.

I have also worked for Boeing in reviewing patent applications that outside counsel had drafted to assure that they were technically accurate and that the claims were proper and covered all the essential areas of the invention. Often during this time I received feedback from numerous patent lawyers dealing with USPTO office actions and other actions of the USPTO. With this background and 34+ years as an examiner, I could be of great assistance in dealing with issues that may come up during the prosecution of an application before the USPTO.

In March of 2007, I joined a select team of technological experts, and founded the Patent Project Group ( http://www.patentprojectgroup.com/ ). During the development of this company I have had the occasion to network with several patent search companies and other e-commerce companies. I have used my expert knowledge in the aeronautics area to assist in the evaluation of several automated patent search engines. I have also been involved with James Madison University in Virginia in helping with areas of their developing Technology Transfer department. During this time I have had the opportunity to interact with numerous inventors and see some of their frustrations and wonders with the operation of the USPTO. I have also approached Penn State University and am pursuing the concept of using Patents as a research tool in the area of Academic research in the Aerospace area. I have also done numerous patent validity searches for various law firms involved in patent infringement suits, all of which were dropped by the patent holders.

You may ask: Why do I need such a person to do a detailed search before filling an application when the USPTO will do a search? A complete search can avoid a prolonged prosecution in the USPTO. The USPTO has an ever increasing backlog of patent applications and as a result is continually pressuring the examiners for more work and constantly hiring new examiners. This atmosphere increases the chances that your application will be examined by an inexperienced examiner or by one that feels pressured to get your application done quickly. This could result in a first action that applies art that barely meets the broad scope of your initial claims and could totally miss the heart of the invention. This results in years of prosecution with added office actions, re-filings and thousands of dollars in fees and related expenses. A search that develops the best prior art results in a strong patent that will stand up to future scrutiny, and be a more valuable intellectual property. An infringement lawsuit that comes up with better art and invalidates a patent can cost literally millions of dollars after an extended court battle. On the other hand if you find yourself the object of an infringement suit an experienced searcher can save you literally millions of dollars by potentially finding that overlooked reference that will invalidate the patent in question. I also have the background and knowledge to file a proper and affective Accelerated Examination documentation in the aerospace technology.