Abel IP

Jeffrey S. Abel

Managing Partner
512.900.8501
Jeff

Profile

Jeff Abel focuses on a wide range of client services, with a particular emphasis on complex, business driven IP-related initiatives. His experience includes:

  • Strategic portfolio development based on comprehensive competitor patent landscape studies
  • Company-critical patent reissues and reexaminations
  • Right-To-Practice/Clearance studies in connection with product development, corporate transactions (M&A), and new market exploration
  • Invalidity and non-infringement studies
  • Pre-filing infringement due-diligence, including directing reverse engineering and characterization of target products
  • Directing design activities for new products vis-à-vis 3rd party IP portfolios
  • Worldwide patent procurement, including prosecution before the patent offices of North America (US, Canada, Mexico), WIPO, Europe (EPO; contracting states Germany, France, UK, Belgium, Spain, Portugal, Poland), Asia (Japan, China, Taiwan, Korea, Singapore, Thailand, India), Eastern Europe (Russia, Ukraine), Western Asia, and South and Central America (Colombia, Brazil)
  • Technology transactions and licensing

Jeff has 20 years of intellectual property legal experience as a DC-based patent practitioner, in-house counsel of several US Fortune 200 companies, and several principal positions in private practice. Jeff began his career practicing patent law in Washington, DC; the combination of access to sophisticated mentors, large patent-savvy corporate clients such as NGK Insulators and Matsushita, and proximity to the USPTO, focused Jeff on providing exceptional work product in a pragmatic, cost effective manner. Jeff issued over 300 US patents and had a successful track record before the USPTO Board of Patent Appeals and Interferences during his practice
in the DC area.

In-house patent counsel positions with Motorola, Inc., supporting its Semiconductor Products Sector (now Freescale), and General Electric Company, supporting its Global Research operations in New York, helped round out Jeff’s experience base by developing a keener understanding of the needs of institutional clients. Jeff also has a strong background in technology transactions, which includes his experience as a senior transactional attorney with Wilson Sonsini Goodrich & Rosati.

Technologies:

  • Scintillators and Radiation Detectors
  • Photovoltaics
  • Fuel Cells
  • Microelectronic Assemblies
  • Nanotechnology
  • Ceramics
  • Metallurgy
  • Polymers
  • Abrasive Materials
  • Semiconductor fabrication
  • Superconductors
  • Oil & Gas, with focus on exploration products and processes
  • Medical Devices, including peripheral vascular and spinal fixation products
  • Building Materials, including roofing, wallboard, siding products

Admissions

  • State Bar of Virginia, 1996
  • United States Patent and Trademark Office, 1992
  • AIPLA, member, 1991
  • ABA, member, 1996

Education

  • George Washington University, Washington D.C., J.D., 1996
  • Alfred University, Alfred, New York, B.S. Ceramic Engineering, 1991