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About John

John Phillips is a senior principal in the Southern California office of Fish & Richardson P.C. He was previously with the firm from 1994-1999 and rejoined in 2001. His practice emphasizes inter partes and ex parte post-grant work, due diligence and freedom to operate investigations, patent opinions, and strategic patent prosecution. Mr. Phillips has extensive experience in post-grant proceedings, having appeared in over 120 proceedings at the Patent Trial and Appeal Board (PTAB). He is also a member of the communications committee and publications sub-committee of the PTAB Bar Association.

Mr. Phillips represents a wide range of clients, from individuals and startups to mid-sized and large corporations. His areas of technical expertise include internet-related technologies, computer software, telecommunications, electronics, medical devices, e-commerce, computer graphics, advanced materials, oceanography, hydrocarbon recovery, enterprise software systems, 3D computer graphics, electronic imaging, user-interfaces, electronic messaging, digital rights protection, database technology, computer networking, and avionics.

Mr. Phillips is involved in many charitable causes. He currently serves on the board of advisors for Workshops for Warriors, a charitable organization whose mission is to train combat veterans for careers in advanced manufacturing, and he provides pro bono legal services for adoptive parents through the Alliance for Children’s Rights. He also routinely represents solo inventors on a pro bono basis, obtaining patents on inventions for magnetic shoelaces, a modified baby bottle, and an intelligent fertility thermometer, among others.

Mr. Phillips was previously general counsel for MercExchange LLC and Navlet.com Inc. (2000-2001), an associate and law clerk with Fitzpatrick, Cella, Harper & Scinto (1990-1993), a staff electrical engineer with Johns Hopkins University’s applied physics laboratory (1988-1989) and a research & development engineer with Scripps Institution of Oceanography (1985-1988).

Publications

Author, “Watching the Sun Set on Covered Business Method Review,” Law360, September 14, 2020.

Author, “Not Sure Which Products are Patentable? Create an IP Harvesting Program,” Bloomberg Law, October 24, 2019.

Author, “Patent Acquisition: A Due Diligence Checklist,” Fish & Richardson, February 2019

Author, “PTAB First! CBM Review Denied on Jurisdictional Grounds,” fishpostgrant.com, May 2014.

Media Coverage, “Being Philanthropic on the Job,” San Diego Metro magazine, March 2013.

Quoted, “Federal circuit and USPTO seek to clarify business method patents,” Managing Intellectual Property, January 2013.

Author, “Sui Generis Intellectual Property Protection for Computer Software,” 60 Geo. Wash. L. Rev. 997 (1992).

Co-author, “Modifications to the Sea Beam Bathymetric Survey System,” OCEANS ’88, October 1988.

Co-author, “Multiple Sound Source Synchronizer for Seafloor Surveying, Society of Petroleum Geologists,” Offshore Technology Conference, May 1988.

Speaking Engagements

Speaker, IPO IP Chat Channel Webinar: BRI and Claim Drafting, December 9, 2016.

Winner, Patent Law – San Diego Business Journal “Leaders in Law” 2019

Named a “Leader in Patent Law” by San Diego Business Journal for 2019.

Named an “IP Star” by Managing Intellectual Property for 2013-2020.

“Top PTAB Practitioner” by Managing Intellectual Property for 2017-2018.

Named as one of Top 25 Leading Portfolio Managers in California by the Los Angeles Daily Journal.

Listed in The Southern California Super Lawyers, San Diego 2007 and 2010 surveys for Intellectual Property.

Listed as one of The Daily Transcript‘s “Top Influentials” for 2007 and 2008.

Listed in The Legal 500 US – IP survey of top law firms and lawyers in the area of patent reexamination

Focus Areas
Education

J.D. Valedictorian, Order of the Coif, George Washington University Law School (1992)


B.S. cum laude, Electrical Engineering, University of Michigan (1984)

Admissions
  • U.S. Patent and Trademark Office 1992
  • California 2003
  • U.S. Court of Appeals for the Federal Circuit 1994
Clerkships

U.S. Court of Appeals for the Federal Circuit, The Honorable Alvin A. Schall, 1993 - 1994

Memberships & Affiliations

Member, Communications Committee, PTAB Bar Association

Member, Publications Sub-Committee, PTAB Bar Association

What's trending with John

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News
September 15, 2020
Fish Attorneys Author Law360 Article, "Watching the Sun Set on Covered Business Method Review"
Media Mention
Articles
News
News
August 4, 2020
32 Fish & Richardson Attorneys Named 2020 “IP Stars” by Managing Intellectual Property Magazine
Recognition
News
News
October 24, 2019
John Phillips Authors Article in Bloomberg Law, “Not Sure Which Products are Patentable? Create an IP Harvesting Program”
Articles
News
Event
October 24th, 2019 | 4:00 pm PDT
San Diego Business Journal: Leaders in Law Awards
Award Ceremony
News
May 22, 2019
Fish & Richardson Announces 32 Attorneys Named “IP Stars” by Managing Intellectual Property Magazine
Press Release
Recognition
News
News
May 21, 2018
Fish & Richardson Announces 39 Attorneys Named “IP Stars” by Managing Intellectual Property Magazine
Press Release
News
News
June 23, 2017
Fish & Richardson Announces 36 Attorneys Named “IP Stars” by Managing Intellectual Property Magazine
Press Release
News
Event
December 15th, 2016 | 4:30 pm PST
ACC Annual Holiday Mixer & CLE Program
Speaking Engagement
Event
December 9th, 2016 | 1:00 pm EST
Webinar | IPO IP Chat Channel: BRI and Claim Drafting
Webinar
Event
March 12th, 2014
Post-Grant for Practitioners: CBM Eligibility and Reviewability
Speaking Engagement
Event
August 23rd, 2012
IP 101 Workshop
Speaking Engagement
Event
June 7th, 2013
Technology Resource Incubator Outreach (TRIO) - Roundtable
Speaking Engagement
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