Edward S Sherman

I was trained and worked as a scientist and engineer in several high tech companies after earning BS and PhD degrees in Materials Science and  Polymer Scieence and Engineering respectivelly.

After working in licensing business development I became a patent agent and in-house intellectual property manager while attending law school.

I now have over 25 years experience of private practice and in-house experience aiding and advising scientists, engineers and managers in identifying and protecting IP through all phases of the product development cycle; including preparing and prosecuting patent and trademark applications, clearance and validity opinions, structuring licensing and joint development programs, as well as advising on trade secret matters. I also have prior technical and program management experience, including licensing program management and business development. For the last 20 of these years I have been in private practice as a registered patent attorney, with the 5 prior years working a patent agent.

During this period it has become more difficult to obtain patents in the US due to a several Supreme Court decisions. To increase the likelihood of patents with valuable claims being allowed, I take an very proactive approach to engage with my clients and inventors. First, I want to understand how and why earlier attempts or designs failed or were inferior to the current invention. I also try to anticipate how an examiner may combine prior art (generally patents and publications) from various fields and/or apply legal precedent to reject my client’s claims for being obvious. We then prepare the patent specification to point out unexpected benefits and advantages, especially if the accrue from subtle differences in the products or technology that are unlikely to be found in the prior art 

The following are representative of areas in which I prepare and prosecute patent applications:

• Polymer and Materials Sciences, Metallurgy, Thin Film and Semiconductor Processing
• Image Processing and Display Technology
• Personal Care Products
• Medical Devices and Diagnostic Technology
• Instrumentation and Optics
• Electronic Packaging
• Consumer products, including exercise equipment and sporting goods
• Chemical and Bio-Chemical Processes and Energy Generation
• Software and the IOT.

I provide my clients with the comprehensive advise and services necessary to protect the evolving competitive advanatges as ideas progress to marketable products and service, which frequently includes appropriate protective and contractual agreements, trademarks and registrations.