Professionals

Matthew B. Pinckney

Member

Matthew Pinckney’s practice includes a wide array of intellectual property services, including preparing and prosecuting patent applications, for filing both in the United States (US) and internationally, and providing opinions regarding intellectual property infringement, patentability and validity of intellectual property holdings.

Matt has prepared and prosecuted hundreds of patent applications for clients in technical fields such as: audio systems, including speakers, headphones and other wearable audio devices; augmented reality (AR) and virtual reality (VR) platforms and related devices; mobile applications; materials inspection systems; integrated circuit design, testing and fabrication; power system components and related control systems; heating and cooling systems; medical devices; medical testing equipment; nuclear magnetic resonance (NMR) imaging and related data analysis; electrical and utility network design; and software. Matt believes that establishing and maintaining a dialogue with the US Patent and Trademark Office (USPTO) is an efficient and effective way to advance his clients’ interests, and conducts numerous interviews with patent examiners each month.

 

Representative Experience:

• Prepared and prosecuted hundreds of US patent applications for individual inventors, small to mid-sized companies, and Fortune 100 companies.
• Advises US companies with significant sales in international markets about filing strategies and cost-saving mechanisms for seeking protection of their intellectual property overseas.
• Aids affiliates from outside of the US in filing patent applications before the USPTO, and finds creative strategies for managing their clients’ budgets when seeking international patent protection.
• Helps companies coordinate large groups of patent filings for product launches in a timely and cost-effective manner.

 

Publications

• Characterizing Prior Art to Limit the Broadcast ‘Reasonable’ Claim Interpretation – In Re Abbott Diabetes Care Inc., Boston Patent Law Association Quarterly Newsletter
• Pre-Issuance Submissions to the US Patent and Trademark Office – Details, Guidelines and Strategies for Challenging Patent Applications Under the New Provisions of the AlA, Boston Patent Law Association Quarterly Newsletter
• The SHIELD Act Takes Aim at Non-Practicing Entities, Boston Patent Law Association Quarterly Newsletter
• IP Portfolio Strategy in a Post-Grant Review World, Albany County Bar Association Newsletter
• Expanding Access to the US Patent and Trademark Office, Albany County Bar Association Newsletter
• US Patent Office Initiates New Pilot Program to Streamline Examination, Albany County Bar Association Newsletter
• Growing Legal Concerns in Mobile Application (App) Technology, Albany County Bar Association Newsletter
• Patents Ruling a Glimmer of Economic Hope, Times Union

 

Professional Memberships

• New York State Bar Association
• American Intellectual Property Law Association