Michael D. Stein

Education

 

University of Pennsylvania, B.S.E.E.

American University, J.D., cum laude

Practice Areas

 

Intellectual Property Law

Patent Prosecution

Trademarks

Copyrights

Technology Transfers

Bar Memberships  

 

Maryland

District of Columbia

U.S. Patent and Trademark Office

U.S. District Court of Maryland

ABOUT MR. STEIN

Michael D. Stein, received a Bachelor of Science degree in Electrical Engineering from the University of Pennsylvania in 1987, and a Juris Doctor degree from the American University in 1992. Mr. Stein is admitted to the Bars of the District of Columbia and Maryland and to practice before the U.S. Patent and Trademark Office. Mr. Stein worked as a systems analyst on missile guidance systems for two years upon receiving his electrical engineering degree. While earning his law degree, Mr. Stein performed patent searches in the Patent and Trademark Office, prepared patentability reports, prosecuted trademark applications and was involved in computer hardware and software licensing issues.

 

Mr. Stein has been actively involved in the preparation and prosecution of U.S. patent applications in many different areas of technology with particular emphasis upon consumer electronics (particularly optical storage media, televisions, audio devices, flat panel displays), computer hardware and software, printers, networking, telecommunications, semiconductors, and robotics. In addition, Mr. Stein has been actively involved in the preparation of validity and infringement opinions, reexamination and reissue proceedings, trademark oppositions, and preparation and prosecution of U.S. trademark applications, as well as counseling clients extensively in regard to other intellectual property matters. Mr. Stein has also been involved in Internet trademark disputes.

 

Mr. Stein has presented a number of seminars to large multi-national corporations and to law firms in Asia on relevant patent, trademark and copyright issues. He has also organized short and long term training programs held in Washington DC for clients and members of the patent community, and provided counseling on matters relating to intellectual property (IP) portfolio development and the organization of in-house corporate structures.

 

Prior to Stein IP LLC, Mr. Stein was a co-founding partner of Stein McEwen LLP.

 

Mr. Stein is a member of the American Intellectual Property Law Association, the American Bar Association, and the Licensing Executives Society. He has also participated in seminars and activities of the Asia Pacific Lawyers Association and the Asian Patent Attorneys Association. He is AV-rated by Martindale-Hubbell

Boston Symposium at Harvard University


Click here to see pictures from the event 

PRESENTATIONS

  • Boston Symposium at Harvard on September 21, 2023  lecture on "The Internationalization of Intellectual Property and Patent Portfolios"


Before various clients, in March 2023, Mr. Stein gave presentations of the following topics:


  • Avoiding and Minimizing the Risk of US Patent Litigation
  • Importance of Patents and Patent Porfolios in the US
  • Secret Sale Helsinn Case
  • Double Patenting Rejection and Terminal Disclaimer



  • Stellbrink & Partners in Munich Germany, on February 1, 2019, and the topics were titled What Can be Patented (as related to patent eligibility under 35 USC §101) and Avoiding and Minimizing the Risk of US Patent Litigation.
  • Kansai Patent Attorneys Study Group (KTK) Branch of Japanese Patent Attorneys Association (JPAA) in Osaka, Japan on February 27, 2019 and the topic was titled Responding to Office Actions.
  • Institute of Intellectual Property (IIP) in Tokyo on April 14, 2015 and the topic was titled USPTO and Litigation Statistics for 2015
  • The Hong Kong University of Science and Technology (HKUST) in Hong Kong on April 18, 2015 and the topic was titled What Start-Ups, Universities and Research Centers Should Know About IP and How to Utilize the IP for Financial and Competitive Benefit
  • Applied Science and Technology Research Institute (ASTRI) in Hong Kong on April 18, 2015 and the topic was titled The Fluctuating State of 35 USC § 101
  • State Intellectual Property Office of the PRC (SIPO- the Chinese Patent Office), before a group art unit of Examiners on April 20, 2015, and the topic was titled The Fluctuating State of 35 USC § 101
  • Kansai Patent Attorneys Study Group (KTK) , which is the Kinki Branch of the Japanese Patent Attorneys Association (JPAA), on November 13, 2014 and the topics were titled Recent SCOTUS Developments (updated in April 2015), Fluctuating State of 35 USC § 101 (updated in April 2015) and: Functional Claim Language (updated in April 2015), dealing with recent developments in 35 USC 101 and 112 in the courts and at the USPTO
  • TX Entrepreneur Partners General Incorporated Association (TEP), a high technology incubator in Chiba, Japan on November 11, 2014 and the topic was titled What Start-Ups, Universities and Research Centers Should Know About IP and How to Utilize the IP for Financial and Competitive Benefit, From Both US and Chinese Perspectives
  • Korean Patent Attorneys Association (KPAA), in Seoul, Korea on July 2, 2014 and the topic was titled Drafting Process Claims
  • Leahy-Smith America Invents Act of 2011 before the Kansai Tokyo Kyenkyukau (KTK) in Osaka, Japan on November 7, 2011
  • Kansai Patent Attorneys Study Group (KTK)  in Osaka, Japan (March 2011)Avoiding U.S. Intellectual Property (IP) Infringement and Determining Potential Infringers
  • MARPA 2010 Annual Conference in Las Vegas (2010).Strategies on Assuring Your PMA Development Programs Avoid Competitors' Intellectual Property
  • Preserving Intellectual Property Rights in Government Contracts Series: A Beginner's Guide, as part of the D.C. Bar Continuing Legal Education Program (April 1, 2008)
  • Protecting and Enforcing IP Rights in Government Contracts: What You Don't Know Will Hurt You, presented November 13, 2007 by Strafford Publications, Inc.