Jonathan M. D'Silva

Jonathan M. D'Silva

  • Business Law, Communications & Internet Law, Entertainment & Sports Law ...
  • District of Columbia, New York, Pennsylvania, United States Patent and Trademark Office (USPTO)
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Biography

I practice various aspects of intellectual property law from prosecuting patent, trademark, and copyright applications, to drafting agreements for the sale or licensing of intellectual property, to the enforcement of intellectual property rights.

In addition to the science, engineering, and technology aspects of intellectual property, I also work on the business aspects. I work closely with CEOs, R&D engineers, small business owners, and inventors to make sure that they understand the options available to them and how best to protect their intellectual property assets.

My practice is local, state-wide, national, and international. I work closely with the other members of MacDonald Illig's Intellectual Property and the Business Transaction Groups to ensure the client's selected path is pursued vigorously and with the right team.

Practice Areas
Business Law
Business Contracts, Business Dissolution, Business Finance, Business Formation, Business Litigation, Franchising, Mergers & Acquisitions, Partnership & Shareholder Disputes
Communications & Internet Law
Internet Law, Media & Advertising, Telecommunications Law
Entertainment & Sports Law
Health Care Law
Insurance Defense
Intellectual Property
Patents
Patent Appeals, Patent Litigation, Patent Prosecution
Jurisdictions Admitted to Practice
District of Columbia
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New York
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Pennsylvania
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United States Patent and Trademark Office (USPTO)
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District Court of the Western District of Pennsylvania
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Languages
  • English: Spoken, Written
Professional Experience
Senior Research Aide (IP Division)
University at Buffalo Office of Science, Technology Transfer, and Economic Outreach (STOR)
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Conducted patentability assessments of new technologies developed at the University at Buffalo including inventor interviews, patent scope assessment, and assessment result presentation.
Law Intern
Law Office of Thomas R. FitzGerald, Esq. Rochester
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Drafted patent claims and specifications, patent application amendments and arguments, office action responses, internal and external memoranda, letters to clients and subcontractors. Conducted legal research for relevant case law and prior art patents for patent infringement cases. Assisted in inventor interviews.
Project Engineer
Malcolm Pirnie, Inc.
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Environmental Engineer. Provided engineering project support including feasibility studies, evaluations, designs, monitoring, and long- and short-term planning of wastewater, storm water, and drinking water systems and treatment plants, groundwater treatment and remediation, landfills, and compost facilities. Participated in and conducted site visits and field investigations in support of engineering designs and evaluations including managing and overseeing subcontractors, conducting and overseeing process testing and evaluations. Provided engineering support on the design and installation of regulated medical waste treatment systems.
Education
State University of New York - Buffalo
J.D. | Concentration in Technology & Intellectual Property Law
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Honors: American Bar Association Section of Intellectual Property Law and The Bureau of National Affairs, Inc. Award For Excellence in the Study of Intellectual Property Law
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Cornell University
M.Eng. | Agricultural and Biological Engineering concentrating in Environmental Engineering and specializing in Bioengineering
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Cornell University
B.S. | Agricultural and Biological Engineering concentrating in Biological Engineering
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Awards
Rising Star
Pennsylvania Super lawyers
2013, 2014
Award For Excellence in the Study of Intellectual Property Law
The American Bar Association Section of Intellectual Property Law and The Bureau of National Affairs, Inc.
Professional Associations
Hooked on Books
Member
Current
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Pittsburgh Tech Council
Member
Current
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Innovation Collaborative
Member of the Board
Current
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InnovationErie Design Competition
Chair
- Current
Activities: Chair of the InnovationErie Design Competition for 2010 and 2011; (www.innovationerie.net)
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Purple Martin Conservation Association
Board Member
- Current
Activities: Member of the Board - Attend Board Meetings to direct and oversee the activities of the PMCA; Assist the PMCA in answering questions on legal matters; Assist the PMCA with Federal registration of a number of trademarks; Chair of the Education Committee to promote outreach to educators and schools
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New York State Bar  # 4446951
Member
- Current
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Erie County Bar Association (Pennsylvania)
Member
- Current
Activities: New Citizens/Naturalization Committee (Chair - 2009, 2011) - Represent the Erie County Bar Association at new citizen Naturalization Ceremonies at the Federal Courthouse in Erie, PA. Scholarship Committee(Chair 2010) - Review, interview, and vote on law school student applicants for the annual Erie County Bar Association Scholarship. Young Lawyers Committee - Assist in events planning; participate in various community outreach events such as high school level Moot Court
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Pennsylvania Bar Association
Member
- Current
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DC Bar Association
Member
- Current
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Erie Country Bar Association (Pennsylvania)
Member
- Current
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Niagara Frontier Intellectual Property Law Association
Member
- Current
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American Intellectual Property Law Association
Member
- Current
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Erie County Bar Association (New York)
Member
- Current
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American Bar Association
Member
- Current
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International Institute of Erie
Board Member
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Activities: Member of the Board - Attend Board meetings to direct and oversee the activities of the Institute ⢠Assist the Board of Directors in answering questions on legal matters ⢠Member of the Ad Hoc Committee investigating long-term fund raising. Vice President of the Board (September 2006 - Present) Chair Board Meetings in the absence of the President ⢠Represent the Board and the Institute to the national affiliate.
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Publications
Articles & Publications
New Product Law: An Introduction to Concepts of Intellectual Property, and Product Safety and Liability Law Affecting the Product Developer
A Patent Law Primer
International Intellectual Property Protection
Patent Law and Patentability
New Product Law: An Introduction to Concepts of Intellectual Property, and Product Safety and Liability Law Affecting the Product Developer
An Intellectual Property Primer
Pitfalls of Provisional Patent Applications
Business Magazine
Software an Easy Target for Copyright Infringement
Business Magazine
Contact & Map
Erie, PA, US