Josh Griswold is a Principal in the Dallas office of Fish & Richardson. His practice includes all aspects of intellectual property law, with particular emphasis on contested intellectual property matters before the U.S. Patent and Trademark Office and in the Federal courts. He provides strategic counseling to clients, bringing a unique and well-rounded perspective of a skilled practitioner with deep experience both in procurement and in enforcement and defense.
As a core member of the Firm’s Patent Post-Grant Practice Group, Mr. Griswold has represented clients in numerous reexamination and post-grant review proceedings. He has also leveraged his technology savvy in the infringement and validity aspects of disputes in Federal courts across the country.
Mr. Griswold serves clients in developing worldwide patent portfolios with an eye toward crafting portfolios that effectively exclude competitors and can be monetized through licensing and enforcement. He brings a unique, litigation informed perspective to his patent procurement strategies. His practice spans the lifecycle of intellectual property, from helping clients understand and navigate the intellectual property landscape as they bring new products to market to helping clients prune portfolios to divest low value assets. When companies and intellectual property change hands, he brings extensive experience in technology assignment and license agreements.
Although Mr. Griswold represents some large companies, he also enjoys working with mid-market and start-up companies. He has developed a program that helps burgeoning technology businesses integrate internal systems and workflows that capture and allow the business to intelligently protect their developing intellectual property and better position for investment and acquisition.
Mr. Griswold is core to the team that designs and presents the Firm’s internal patent training programs on patent procurement, due diligence, licensing and intellectual property agreements, and intellectual property disputes.
Technical Areas of Expertise
Mechanical: Oilfield drilling, completion and production equipment and techniques, including his prior experience as an engineer designing subsea oilfield completions and robotics; seismic analysis and equipment; internal combustion in connection with reciprocating and turbine engines, including ignition and fuel delivery; vehicle systems; turbochargers; winged and rotor aircraft mechanical controls; surface and subsea robotics; mobile device handsets and human interfaces; energy recovery systems, including heat recovery cycles (e.g., organic rankine cycle systems) and fluid pressure recovery systems; flywheel energy storage systems; carbon fiber and other fiber reinforced composite construction; motion control systems; valves; wind turbines; solar panels and collectors and installations; microelectrical mechanical systems (MEMS)
Electrical: Control systems; wireless telemetry; sensor based control; electronics and mobile device packaging; motors and generators and related power electronics; magnetic bearings and controls; battery charging and discharging control systems; analog circuits; semiconductor manufacturing; wavelength division multiplexing; optoelectronics
Software: Software modeling of physical systems; oilfield drilling simulation, production optimization, and modeling rock fracture and fluid flows; engine control systems in connection with reciprocating and turbine engines; enterprise software for managing business operations; product and service point of sale and sales aggregation software; medical records management; optical character recognition; energy trading
Speaker, A New Day at the PTAB? Using the New Pilot Program for Motions to Amend and the Clarification on Reissue and Reexam, Intellectual Property Owners Association Webinar, (February 2020).
Speaker, NHK, Valve, and Discretionary Denials, Fish Post-Grant for Practitioners Webinar, (June 2019).
Faculty, USPTO Post-Grant Patent Trials 2015, Practicing Law Institute, New York City, NY (March 2015).
Post-Grant Executive Roundtable, Consero Group, Washington D.C., (September 2014).
Patent Reform and Legislative Changes on the Horizon: What You Need to Know About the Changing Patent Process & IP Protection, Dallas, Texas, (October 2005).
In-House Counsel Stay Updated on Patent Review Proceedings, The Texas LawBook, (May 2014).
Quoted, Firm Introduces Patent Procedure App, TexasBarBlog, (May 2014).
Named a 2019 “Best Mentor” by Texas Lawyer
Recognized in IAM Patent 1000 – “The World’s Leading Patent Professionals” (2019-2020).
- IP Licensing, Transactions, and Agreements
- Opinions and Strategic Counseling
- Patent Portfolio Management
- Patent Prosecution
- Patent Reform Updates
- ITC Litigation
- Patent Litigation
J.D., University of Houston Law Center (1999)
B.S., Mechanical Engineering, University of Texas at Austin (1995)
- U.S. Patent and Trademark Office 2000
- Texas 1999
- U.S. District Court for the Northern District of Texas
- U.S. District Court for the Southern District of Texas
Member: American Intellectual Property Law Association, American Bar Association, Dallas Bar Association (Intellectual Property Section), PTAB Bar Association.
August 12, 2020
Fish & Richardson Receives Top “Gold” Ranking from IAM Patent 1000 for National Litigation Practice; National Rankings in the Plaintiff Firm and Prosecution Firm Categories
June 20, 2019
Fish & Richardson Receives Top “Gold” Ranking from IAM Patent 1000 for National Patent Litigation Practice
June 13th, 2019 | 1:00 pm EDT
Post-Grant for Practitioners Webinar - NHK, Valve, and Discretionary Denial
October 17th, 2018
2018 Eastern District of Texas (EDTX) Bench Bar Conference
June 14, 2018
Fish Receives Top “Gold” Ranking from IAM Patent 1000 for National Patent Litigation Practice
November 28th, 2017 | 1:00 pm EST
Post-Grant for Practitioners: Amendments After Aqua Products
August 30, 2016
Fish's Joshua Griswold & Dan Smith Quoted in Managing Intellectual Property Article, "PTAB 4 Years In: PGRs Ready For Primetime"
August 10th, 2016 | 1:00 pm EDT
Webinar: Post-Grant for Practitioners - Post-Grant Review (PGR) Proceedings are Gaining Momentum
May 24, 2016
Shifts in Amendments at the PTAB
May 5, 2014
Firm Introduces Patent Procedure App