Robert Greene Sterne

USA: DC

Sterne, Kessler, Goldstein & Fox
1100 New York Avenue
NW Washington, DC
20005

Tel: 202.772.8555
Fax: 202.371.2540

Email: rsterne@skgf.com
Web: www.skgf.com

Mr. Sterne is one of the leading patent attorneys in the United States in patent reexamination and concurrent patent litigation both in the federal courts and the United States International Trade Commission. He is recognized by his peers as a thought leader on board of director responsibility and best practices concerning intellectual property. He specializes in the area of intellectual property for cutting edge technologies in the electronics, computer, communications, biomedical and nanotech arenas, the monetization of patents, patent litigation and patent licensing.

Mr. Sterne has been consistently recognized in peer-based directories and lists as a leading attorney in the intellectual property arena. Clients rely on his negotiation skills and big picture approach to patent procurement and protection, licensing and enforcement that considers the product, distribution, network and market conditions. Additionally, Mr. Sterne is a sought after expert witness, has written and spoken extensively on the subject of patent reexamination and concurrent patent litigation, and is Chairperson of the Editorial Board of The PTO Litigation Center. He has served as a Special Master for Judge Marvin J. Garbis in a case involving patent inventorship, ownership, and U.S. and foreign patent applications and prosecution.

Mr. Sterne has played a role in groundbreaking, precedent-setting case law. Most recently, he served as co-counsel in KSR International Co. v. Teleflex, Inc., one of the most significant patent cases heard by the Supreme Court in 40 years. The case addressed the fundamental question of when an invention is “obvious” and therefore not patentable. Since the Court’s decision in April 2007, Mr. Sterne has been sought by the media and fellow practitioners to provide analysis and insight on the implications of the ruling on patent law and innovation. Additionally, he was the lead attorney in In re Beauregard, 53 F3d 1583,35 USPQ2d 1383 (Fed. Cir. 1995). This groundbreaking case was brought by IBM at the Federal Circuit to establish that a computer program on a disk was patentable subject matter. The case resulted in the United States Patent and Trademark Office issuing new proposed software patent guidelines which expanded the scope of patent protection for software. He was counsel for appellants in In re Jung et al, before the Federal Circuit, which involves the prima facie anticipation requirement in patent prosecution.

Mr. Sterne acts as an IP strategic advisor to start ups, emerging companies and investors and serves on the boards of directors of a publicly traded company and a number of charitable organizations. He is a member of the University of Maryland School of Law, IP Program Advisory Board and the Advisory Board of The Sedona Conference. He served as the co-chair of the Sedona Patent Litigation Conference in 2001, 2002, 2007, 2008, 2009 and 2010 (to be held October 2010). For more than twenty years, Mr. Sterne was a member of the Advisory Board of BNA’s Patent, Trademark and Copyright Journal. He holds an Extra Class radio license (WK3W) from the FCC.

Mr. Sterne is the Editor-in-Chief of Patent Office Litigation, a two-volume set focused on the new contested proceedings under the America Invents Act published in 2012 by Thomson Reuters Westlaw. This book examines how the proceedings interact with other aspects of patent procurement and enforcement, and delivers practical analysis and advice.

Mr. Sterne is a strong proponent of diversity and inclusion. He is a member of the Women’s Bar Association of the District of Columbia, on the firm’s diversity task force, and actively involved in mentoring both in the firm and with outside organizations. Mr. Sterne is also active in the community. He was elected to the Executive Board of the National Capital Area Council, Boys Scouts of America (BSA), in 2003. He was awarded the Silver Beaver by the NCAC in 2010, the highest award given at the Council level. He was very involved in Scouting as a youth, and now serves as the Eagle Scout Coach/Advisor to Troop 1983 in Oakton, Virginia. He was the founder of the Attorney of the Year: “Good Scout” Award Luncheon, and chaired this event in 2006 – 2009.

We love patent law and for more than 35 years, Sterne Kessler has been preparing and prosecuting patent applications. We prosecute and enforce utility and design patents for companies with extensive, active patent portfolios, as well as small start-up companies that rely on the patent system to obtain funding and to head off competition. The patents that we acquire for these innovators are sometimes their most important assets.

Why choose Sterne Kessler?

  • Quality Counts – we prosecute when the stakes are high.
  •  Our attorneys, patent agents, and technical specialists have deep technical expertise in a wide range of fields.
  • We provide strategic counsel from idea conception, to product, to launch and beyond.
  • We are regularly recognized by companies and top organizations for patent prosecution.

Our experience with patents does not end with patent preparation and prosecution. We apply our knowledge of the laws and workings of the Patent Office to advise on patent office litigation and claim interpretation for infringement and validity opinions.

Scientifically Skilled Attorneys

Sterne Kessler attorneys and agents are carefully recruited for their technical expertise that often includes advanced technical degrees, significant industry experience, or both.  All of our attorneys are either registered to practice before the U.S. Patent and Trademark Office or are registration eligible.  Many have previously worked as patent examiners and have unique insights into the inner workings of the Patent Office.

Intellectual property issues have never been more complex or challenging than they are right now.  The passage of the America Invents Act only adds to the challenge.

The pace of innovation, too, has never been faster.  New technological inventions and scientific discoveries are being introduced daily and embraced almost as quickly.  The choice of IP legal counsel has never been more critical.

You’re looking for experience and value.  Right?

  • We understand the importance of aligning IP with business strategy.
  • Our team understands technology and is known for anticipating the next big thing – from biotech to nanotech, cleantech, digital healthcare and so on.
  • We have 36 years of patent law experience – we were there for In re BeauregardIn re WandsKSR,Alice, AIA... and we continue there on the cutting edge.
  • We have appeared in district courts around the country, before the Supreme Court and at the International Trade Commission.
  • When it comes to counseling on trademarks, client focus is not just a buzzword we use.
  • We understand the forces at work in the marketplace – where is the demand, where are the chokepoints in your competitors’ technologies – and advise on which ideas to patent, sell or license.

Depth of technical know-how is our intellectual property.

Founded in 1978 and based in Washington, DC, Sterne Kessler is dedicated exclusively to the protection, transfer and enforcement of intellectual property rights.  Our team of attorneys, registered patent agents, students and technical specialists include some of the country’s most respected practitioners of intellectual property law.  Most of our professionals hold an advanced level degree, including more than 60 with a doctorate in science or engineering — credentials wide and deep enough to fill the faculty of a science-oriented university.

We hire the best, brightest and most qualified personnel.

We recruit attorneys and agents specifically for their technical expertise, industry experience and litigation prowess.  All of our patent prosecution attorneys are registered to practice (or eligible to register) before the U.S. Patent and Trademark Office.  Many have previously worked as Patent Examiners and have unique insights into the inner workings of the Patent Office.

A broad range of clients in very specialized industries.

Our client base includes emerging and established companies, venture capital firms, individual entrepreneurs and universities — from bleeding edge technology fields like carbon footprint technologies, pharmacogenomics, nanomedicine and  biofuels to next generation electronics and other consumer products.

We love what we do!

We have unbridled passion for exploring the bounds of technology and the law to help you succeed.  We like what happens, every day, when 170+ IP professionals come to work in a firm that combines the focus of a boutique with the resources of a major IP practice.

Robert Sterne is considered to be “one of the top patent prosecutors in the country,” and is praised for his “very strong work ethic” and capacity to consistently produce a “high-quality work product.”
Chambers USA, 2014