Josh Griswold is a principal in the Dallas office of Fish & Richardson P.C. 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 U.S. district 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 and 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 U.S. district 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 life cycle 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 midmarket and startup 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).