USPTO Official Jumps to Perkins Coie, Expanding DC Office
In Nathan Kelley, Perkins Coie has picked up a patent lawyer with years of experience working inside the U.S. Patent and Trademark Office.
November 05, 2018 at 05:36 PM
3 minute read
Perkins Coie has bolstered its intellectual property group in Washington, D.C., with the hire of Nathan Kelley, a former top-ranking official and administrative judge at the U.S. Patent and Trademark Office.
Kelley, who is joining Perkins Coie as a partner, comes to the firm after stepping down as the solicitor and deputy general counsel for IP law at the USPTO. He previously served as the USPTO's chief administrative patent judge, a role that put him in charge of the Patent Trial and Appeal Board.
Earlier in his career, Kelley spent several years at the U.S. Court of Appeals for the Federal Circuit, the country's primary appellate court for patent and other IP cases. He started as a staff lawyer, and later served as a clerk for Randall Rader, the now-retired former chief judge of the Federal Circuit.
“Nate is one of the foremost intellectual property lawyers in the country, and he is widely respected for his litigation experience and ability,” said Shannon Bloodworth, co-chairwoman of Perkins Coie's IP practice. “His deep knowledge of the USPTO and Federal Circuit will broaden and strengthen our nationally ranked team of IP litigators. He is a significant addition to our team, and we're thrilled that he has chosen to join us.”
In his solicitor role at the USPTO, Kelley was tasked with defending hundreds of PTAB and Trademark Trial and Appeal Board rulings that ultimately wound up at the Federal Circuit on appeal. He also had a hand in guiding the patent and trademark office's rules and regulations, and counseled the office on the implementation of the America Invents Act, which overhauled the country's patent system and created the inter partes review system for challenging patents at the PTAB.
At Perkins Coie, Kelley is expected to work in areas that draw on the expertise he developed at the USPTO and Federal Circuit. The firm said he'll focus his private practice on Federal Circuit appeals, PTAB proceedings and other issues arising out of the patent and trademark office. He'll also counsel clients more generally on IP strategy and policy.
Kelley's hire comes amid a period of expansion for Perkins Coie in Washington, where the firm now has some 130 lawyers, according to Bill Malley, the office's managing partner. This year it has added at least three partners and one senior counsel in Washington, across a range of practice areas. The new members of the roster include Stephanie Roy, a technology transactions and privacy partner; commercial litigation partner Robert Burgoyne; investment management partner Valerie Dahiya; and Nir Margalit, a senior counsel focused on real estate and land trust work.
“Our Washington office has seen exponential growth over the past decade,” Malley said in a statement. “Nate's hiring furthers this trend of adding senior-level lawyers with impressive federal government experience. We're excited to have him on board.”
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