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Tony Barkume 

anthony@barkume.com                                                                                                          

631-259-9099

 

 

 

Patent Portfolio Development, Acquisition and Management

  • Focus on preparation, prosecution and acquisition of patents in the United States and abroad (written/prosecuted over 200 issued patents); management and strategies for large patent portfolios

  • Successful prosecution in overcoming 101/Alice rejections, including Supplemental Examination procedures

  • All phases of prosecution before the U.S. Patent and Trademark Office, including Examiner interviews, appeals, strategic use of continuation practice, offensive and defensive patent reexaminations

  • Proceedings before the Patent Trial and Appeal Board (PTAB) including Appeals and Covered Business Method proceedings

  • Participation in European Patent Office proceedings at The Hague and Munich including Oral Proceedings in prosecution and opposition phases

Patent Analysis and Opinions, Litigation Support – Offensive and Defensive

  • Analysis of third party patent portfolios for freedom of use opinions, development of non-infringement/ invalidity positions, risk analysis, counseling in product design-around for liability avoidance, claim charts and analysis for litigation support

  • Review of third party products and services, determination of infringement of client’s patents with recommendations for litigation or licensing

Patent Licensing Programs and Strategies; Business Counseling and Corporate Transactions

  • Extensive experience in developing progressive licensing strategies from both the licensor and licensee perspectives, brainstorming sessions and invention mining within business groups, presentation of in-house patent seminars, and development of a corporate patent-centric approach

  • Intellectual property audits and analysis, support of mergers and acquisitions and other corporate transactions through due diligence reviews, portfolio analysis, risk assessment

Prior Professional Affiliations -Legal

  • Greenberg Traurig LLP, New York, NY: Partner, Co-Head of Patent Prosecution for IP National Practice Group

  • Symbol Technologies, Inc., Holtsville, NY: In-House Patent Counsel

  • White & Case, New York, NY: Associate

  • Hedman, Gibson & Costigan, P.C., New York, NY: Patent Attorney

Prior Professional Affiliations -Engineering

  • Hazeltine Corp., Greenlawn, NY: Senior Design Engineer

  • AIL Corp., Deer Park, NY: Electrical Engineer

Education

  • St. John’s University School of Law, J.D. magna cum laude 1991; Law Review

  • Stony Brook University, B.E. in Electrical Engineering 1980-1982        

  • Columbia University, School of Engineering & Applied Science 1977-1979

Admitted to Practice

  • New York (including U.S. District Courts for the Southern District of NY and Eastern District of NY)

  • United States Patent and Trademark Office

  • United States Court of Appeals for the Federal Circuit

Publications

  • Patents For Software-Related Inventions, 5 Software L.J. 279, 1992

  • Disclosure Requirements For Software Related Patents, 8 The Computer Lawyer 1, October 1991

  • Proprietary Protection of Computer User Interfaces, 64 St. John’s Law Review. 559, 1990