Jason Eisenberg

About Jason Eisenberg

As a director in the Electronics Group and Reexamination/Reissue firm Practice Leader, I provide strategic counsel from a quarter century of patent experience gained before law school as an examiner, during law school as a patent agent and extern at the Ohio Supreme Court, and after law school. I leveraged my over three hundred PTO Litigation proceedings, both AIA and reexaminations, as a past editor of PTAB Strategies and Insights monthly newsletter and editor and author of several chapters of the Second Edition of Patent Office Litigation (Thomson Reuters, 2017). My leadership at the PTAB belies the fact that I maintain a balanced practice rendering a wide range of opinions, including expert opinions, appeals of PTO proceedings to the Federal Circuit and Supreme Court, as a patent prosecutor, and strategic manager of global patent portfolios. I spend considerable time practicing in the use of reissue patent applications to extend U.S. patent portfolios during pre-litigation assessment and post invaludation. I have also focused my research and writing on strategic use of reissues and supplemental examination to cure issues raised in AIA proceedings, AIA and Alice proofing patents and obviousness strategies for patent owners. Areas of Emphasis and Deep Experience-District Court Patent Law Expert (Antitrust case)- reissue and complex prosecution -Patent Office Litigation - post grant review, inter partes review, covered business method review, ex parte and inter partes reexamination (including Federal Circuit appeals)-Complex International Patent Preparation and Prosecution - including substantial Reissue experience-Due Diligence-Opinions-Client Counseling

Experience

1. Practice Leader (Chair) Reexamination and Reissue Practice

   Sterne, Kessler, Goldstein & Fox

   Jan 2023 — Present · US

Education

• The Ohio State University

  BSEE, Electrical Engineering

  1989 — 1994

• Harvard Law School

  Executive Education Certificate- The Program on Negotiation

• The Ohio State University Moritz College of Law

  JD

  1999 — 2001

• University of Maryland Global Campus

  BS ACCT, Accounting

  1995 — 1997

• Case Western Reserve University School of Law

  Law

  1998 — 1999

Skills

• Freedom to Operate Analysis
• Trademarks
• Patents
• Legal Research
• Cyberlaw
• Patent Preparation
• Client Counseling
• Trade Secrets
• Patent Portfolio Analysis
• Patent Applications
• Patent Prosecution
• Prosecution
• Office Action Responses
• Intellectual Property Valuation
• Legal Advice
• Appeals
• Prior Art Search
• Intellectual Property
• Semiconductors
• Licensing
• Patentability
• Trademark Infringement
• Business Method Patents
• Electronics
• Ip Counseling
• Litigation
• Patent Office Litigation
• Software Patents
• Patent Drafting
• Freedom to Operate
• Patent Law
• Patent Portfolio Development
• Invention
• Copyright Law
• Patent Portfolio Management
• Due Diligence
• Legal Opinions
• Intellectual Property Strategy
• Patent Strategy
• Reexamination