Nathan Weber Partner

Nathan Weber is a partner whose practice is a balance of patent portfolio analysis and strategic development in a wide range of technologies.  The patent portfolio analyses are largely related to Mr. Weber’s involvement in acquisition side due diligence and the related clearance investigations often culminating in the preparation of detailed opinions of counsel. On the patent portfolio strategic development, Mr. Weber manages the development of a number of portfolios for entities ranging from key businesses of multi-national corporations, to small companies seeking to protect a single important product, to start-ups looking to secure an initial foothold in the intellectual property world making them more attractive to investment and acquisition.  Successful strategic portfolio development requires intimate knowledge of a client’s business goals, and the client’s trust that their best interests are being considered every day.

Mr. Weber also has experience in IP litigation and quasi-judicial proceedings.  Having cut his teeth in litigation of Hatch-Waxman generic drug cases, and later in consumer products and design patent cases he continues to be involved in IP disputes brought before the U.S. District Courts.  In addition to district court litigation, Mr. Weber is also involved in the post grant review procedures implemented through the USPTO including reexamination, reissue, and inter-partes review.

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Mr. Weber is a proud graduate of the United States Merchant Marine Academy where he earned his B.S. in Marine Engineering Systems and he went on to earn his J.D at St. John’s University School of Law.  Marine engineering is a multi-disciplined engineering degree comprised of mechanical and electrical system aspects centered on shipboard systems and their environment.  This multi-disciplined technical background has proven a great asset and given him the ability readily grasp complex technical issues in technologies as diverse as microwave ablation, pharmaceuticals, genetic diagnostics, electromagnetic navigation, diapers and consumer electronics.

Education

  • St. John’s University School of Law, J.D., 2002
  • Bachelor of Science, Marine Engineering Systems, 1997
  • United States Merchant Marine Academy

Admissions

  • State of New York
  • United States Patent and Trademark Office
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York

Associations

  • American Intellectual Property Law Association
  • New York Intellectual Property Law Association
  • Association Internationale Pour La Protection De La Propriété Intellectuelle (AIPPI)
  • Licensing Executive Society

Awards

  • 2015 — BTI Client Service All-Star.

Mr. Weber combines his engineering expertise with legal know-how to steer clients through the daunting task of new product launches, corporate acquisitions, and designing portfolio strategies. His ability to distill complex technical information has helped clients achieve significant technological advances in an array of fields, including electromagnetic navigation, microwave ablation, and capsule imaging techniques, as well as the software and user interfaces driving these technologies.

Patent Portfolio Development:

Mr. Weber assists clients at all levels to achieve their patent portfolio goals by becoming intimately familiar with their business, their products, and their people.  He regularly:

  • Facilitates inventor brainstorming sessions and interviews
  • Conducts patentability investigations
  • Prepares and supervises the preparation of new U.S. Patent Applications
  • Supervises patent prosecution both foreign and domestic in an effort to achieve the client’s business protection and IP goals

Clearance:

Mr. Weber regularly analyzes products, whether developed in-house or that of an acquisition target, and advises clients of the potential for litigation, the strength of a target portfolio, and competitors. He regularly:

  • Conducts due diligence investigations for acquisition
  • Conducts new product clearance investigations
  • Drafts opinions of counsel relating to freedom to operate with respect to competitor’s patent portfolios.

Post Grant Procedures:

Though successful initial prosecution is always a goal, often there are times when additional “post-grant” activities must be undertaken.  For example, if an error has occurred, or if strengthening an issued patent is desired these post grant procedures can be invaluable.  Similarly, when faced with an issued patent that is an impediment to our client’s freedom to operate, the new USPTO quasi-judicial procedures can be quite effective. Mr. Weber is currently involved in:  

  • Reexamination
  • Reissue; and
  • Inter Partes Review proceedings

Litigation

Mr. Weber’s current practice focuses on initial representation of clients before the relevant court while settlement negotiations are on-going, or being brought in for patent specific expertise by non-IP litigation counsel.  In addition, Carter DeLuca provides IP litigation support services for litigation counsel where we have historical knowledge that must be considered when litigating on behalf of our clients.

Fields of technology

  • Mechanical and electromechanical devices
  • Medical devices
  • Electrosurgical generators
  • Microwave generators
  • Computer Software
  • Surgical Navigation
  • Renewable energy generation
  • Consumer packaging
  • Consumer electronics
  • Augmented and virtual reality

Board Member of Conquering Kidz Cancer is  a “kids helping kids” organization driven by community based efforts.

tay-bandz is a  501 (C)  3 non-profit  organization  dedicated to raising awareness and funding research for pediatric cancer. tay-bandz (Conquering Kidz Cancer) was founded by Taylor  Matthews who, at age 11, was diagnosed with cancer. Taylor always believed that individuals could make a difference through private efforts. Her dearest hope was that  “someday no child would ever have to face cancer.