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Mr. Ilya Libenzon

Mr. Ilya Libenzon

I work as a solo practitioner helping individual inventors and startups protect
  • Intellectual Property, Patents
  • Massachusetts
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Summary

I am a patent attorney registered to practice before the U.S. Patent and Trademark Office. I also worked as a patent examiner at the USPTO. I hold an M.S. degree in Chemical engineering with specialization in the Semiconductor technology, and I have significant industry experience. My practice covers a wide spectrum of intellectual property services including, preparation and prosecution of patent and trademark applications, opinion services regarding the scope and strength of patents, counseling regarding the protection, enforcement, and licensing of intellectual property rights, and due diligence regarding business transactions involving intellectual property. I have experience in preparing, filing, and prosecuting patent applications in the semiconductors, materials science, chemical engineering, nanotechnology, mechanical engineering, software-based systems, and biomedical fields.

Practice Areas
  • Intellectual Property
  • Patents
Fees
  • Free Consultation
Jurisdictions Admitted to Practice
Massachusetts
Languages
  • Russian: Spoken, Written
Professional Experience
Patent Attorney, Owner
Law Office of Ilya Libenzon
- Current
My practice covers a wide spectrum of intellectual property services including, preparation and prosecution of patent and trademark applications, opinion services regarding the scope and strength of patents, counseling regarding the protection, enforcement, and licensing of intellectual property rights, and due diligence regarding business transactions involving intellectual property. I have experience in preparing, filing, and prosecuting patent applications in the semiconductors, materials science, chemical engineering, nanotechnology, software-based systems, mechanical engineering, and biomedical fields.
Patent Attorney
Houston Eliseeva LLP
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Manage PCT patent applications; prepare responses to office actions related to PCT patent applications in the biotechnology, nanotechnology, semiconductors, chemical engineering and other relevant fields. Communicate with foreign associates with regard to all aspects of patent prosecution (filing, responding to office actions, payment of fees).
Patent Examiner
United States Patent and Trademark Office (USPTO)
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Conducted searches and prepared office actions on patent applications classified in Class 427 and related to semiconductors, nanotechnology, optoelectronics, device fabrication, chemical engineering and other relevant fields.
Patent Technology Specialist
Luminus Devices
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I was responsible for the preparation and coordination of invention disclosures with outside counsel as required for preparing, filing and prosecuting patent applications based on company’s inventions. Provided support and advice to senior executives for the protection of all intellectual property including copyrights and trademark items.
Education
Suffolk University Law School
J.D. (2010) | Intellectual Property, Patent Law
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Honors: Concentration in Intellectual Property Law, Patent Law Specialization with Distinction Dean’s List, 2008-2010
Professional Associations
National Associaton of Patent Practitioners
member
- Current
American Intellectual Property Law Association
member
- Current
Certifications
Registered Patent Attorney (Registration No.66616)
United States Patent and Trademark Office (USPTO)
Websites & Blogs
Website
Law Office of Ilya Libenzon
Legal Answers
31 Questions Answered

Q. 10 years ago I sold the patent rights to a U.S. corp. Can I now re-assert my ownership rights to the patent overseas?
A: you need to examine your assignment agreement -- most likely, you assigned all the rights so you cannot re-assert your ownership rights unless you execute another assignment transferring the rights back to you
Q. How can I contact the assignee or inventor of a patent?
A: First you need to check if the patent has been assigned or not. If the patent has not been assigned, then you can contact the inventors listed on that patent. If the patent has been assigned, you should contact the assignee only because inventor(s) don't have legal rights in this patent anymore. Both, the inventors information and assignment information is available at the USPTO web site.
Q. I own the registered trademark #78284503 Fairway Franks. Someone is selling a domain with that name. Legal or not?
A: it would be illegal if the owner of that domain uses it in connection with products/services similar to those in connection with which you registered your trademark; selling a domain with that name is not illegal per se
Q. Is it copyright infringement to publish a website that does almost the same thing as a current site?
A: it is not a copyright infringement as long as you use your own original language/text to describe the functionality; it may, however, constitute a patent infringement if the functionality is patented by the owner of that website
Q. Looking to create a patent and not sure how to find out if one is already in place for the idea I have
A: You should contact a patent practitioner who can help you conduct a patentability search, and most importantly, interpret search results.
Q. How do i get a patent
A: You should contact a patent attorney who can help you with the following procedure. The first step would be conducting a patentability search to see what it out there disclosed in the prior art for ascertaining the chances of getting a patent. Next step is to draft a patent application taking into account the outcome of the search results.
Q. Does an active patent registered in the USA (Patent number available) applicable to Great Britain?
A: no, patents are regional in their effect, which means that if you have a U.S. patent, you can stop others from making, using, offering for sale, selling your invention only in the U.S. To be able to do the same in the Great Britain, you would need to have a GB patent, or EU patent.
Q. I'm looking at a Patent Application ( #20120291885). How do I know if it has been issued, or if it's pending?Thanks!
A: you can check the status at the public pair using an application number and then for more details, you can go to the Image File Wrapper (IFW) by clicking on the IFW tab http://portal.uspto.gov/pair/PublicPair
Q. What can I do once I have realized that I have written about my 'invention' on my blog - describing it.
A: You need to contact a patent attorney to determine if you can move forward with patenting your invention. That would depend on the scope of your blog post disclosure as compared with your invention. I would be glad to help you with your patent needs.
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Law Office of Ilya Libenzon
Newton, MA, USA
Telephone: (617) 244-4318
Cell: (508) 212-5214