David A. Jones
david@nadesanbeck.com

David A. Jones

David Jones advises clients regarding the development of intellectual property programs to obtain intellectual property assets and also to protect their products, services, and income. Mr. Jones advises clients regarding their ability to protect engineering research and development, product and services recognition, protection of trade secrets, and protection of other intellectual property investments. Mr. Jones further consults with clients regarding the ability to create IP bargaining assets, generate barriers to the acquisition of IP by competitors, and possible challenges to the IP acquired by others.

Mr. Jones has been recognized by Super Lawyers and Salt Lake Magazine as a Mountain States Rising Star (2013, 2014, and 2015).

PROFESSIONAL EXPERIENCE

Mr. Jones is a former equity shareholder and co-founder of the largest Park City, Utah based intellectual property law firm. Mr. Jones is also a former non-equity partner of the largest Salt Lake City, Utah based intellectual property law firm. Prior to law school, Mr. Jones was a United States Patent Examiner at the United States Patent and Trademark Office.

Mr. Jones has extensive experience prosecuting United States and international patent applications in a number of technical fields including: mechanical, electrical, computer hardware, computer software, geospatial imaging and analysis, metrology, medical diagnostic, business method, and optical communications technologies. Mr. Jones also advises clients regarding issues arising from acts in commerce as well as use of trade, service and certification marks and obtaining federal registrations for such marks. Mr. Jones has also represented clients with IP due diligence audits in-connection with corporate acquisitions. In addition, he assisted corporations with establishing in-house IP programs, thereby implementing procedures for auditing, identifying and obtaining intellectual property as well as procedures for managing and minimizing risk and exposure to the intellectual property of others.

Mr. Jones has developed and managed patent portfolios for large corporations, start-up companies, and individuals. Mr. Jones has tailored the patent strategy with each client including consideration of the clients needs, goals, risks, opportunities, and resources.

Mr. Jones counsels clients regarding their trademark protection, distinctive product design, and packaging considerations. Mr. Jones helps clients establish a common theme for a consistent, and protectable, brand identity. Mr. Jones has monitored and enforced the online domain use by others. When necessary, Mr. Jones performed Uniform Domain Name Dispute Resolution Policy (UDRP) actions resulting in approximately 28 successful UDRP resolutions.

Mr. Jones has successfully represented clients in connection with patent owner and third party requester Ex Partes and Inter Partes post grant reexamination procedures. Mr. Jones further counsels clients on post-grant protection measures including licensing, administrative challenges, and inter-partes litigation.

Mr. Jones has drafted patent infringement and invalidity opinions as well as advisory memoranda related to patent, trademark, unfair competition, and copyright matters.

Mr. Jones has developed corporate strategies for IP protection, asset procurement, enforcement, defensive protection, risk management, and IP monetization.

Mr. Jones is a former United States Patent Examiner where he examined U.S. and international PCT patent applications for patentability of the claimed inventions and for matters of form. As a U.S. Patent Examiner, Mr. Jones examined inventions related to: sheet feeding or sheet delivering in class 271; classifying, separating, and assorting solids in class 209; and winding, tensioning, or guiding in class 242. Mr. Jones drafted and issued hundreds of official Untied States office actions and appellate briefs related to the patentability of submitted inventions.

EDUCATION

Mr. Jones graduated from the University of Utah S.J. Quinney College of Law in 2004, where he was a William H. Leary scholar and Negoya International Scholar. Mr. Jones was the University of Utah, S.J. Quinney College of Law's 2004 nominee for the National Jan Jancin Award for Outstanding Achievement in Intellectual Property Awarded by the American Bar Association and American Intellectual Property Law Association.

During law school, Mr. Jones was the recipient of Outstanding Achievement Awards in Intellectual Property Law, Trademark and Unfair Competition, and Judicial Process. Mr. Jones was also the recipient of CALI Excellence for the Future Awards for Patent Drafting and Trademark and Unfair Competition.

Mr. Jones studied International Intellectual Property Law at the Universiteit van Amsterdam as a Negoya International Scholar.

Mr. Jones was an extern to the Honorable Judge Paul G. Cassell of the United States District Court for the District of Utah. And, Mr. Jones was a legal writing teaching assistant to Professor Bonnie Mitchell.

After law school, Mr. Jones was the S.J. Quinney College of Law's Giles Sutherland Rich Memorial Moot Court Competition Head Advisor (2006-2009). Student team awards include two western-regional semi-final teams in the 2006-2007 competition, and one national semi-final team in the 2008-2009 competition.

Mr. Jones is a former board member of the Young Alumni Association for the S. J. Quinney College of Law 2004-2008.

Mr. Jones graduated with a Bachelors of Science from the University of Utah, College of Mechanical Engineering where his emphasis included finite element analysis, computer programming, and machine control (i.e. mechatronics). Mr. Jones' senior project was "The Avalanche Prediction Probe" developed in cooperation with the Snowbird Ski Resort.

PROFESSIONAL BAR ADMISSIONS

Mr. Jones is admitted to the Utah State Bar and the United States District Court, District of Utah, October 21, 2004. Mr. Jones is also admitted as an attorney and agent to the United States Patent and Trademark Office, December 2001.

PUBLICATIONS

Title: The Bow Tie of Patent Claim Construction. LANDSLIDE, A publication of the American Bar Association (ABA) Section of Intellectual Property Law (January 14, 2012). The article discusses the purpose and necessity of the dual claim construction methodologies embodied by the Bow Tie of patent claim construction. The Bow Tie focuses on the comparative construction of claims during patent application prosecution and patent litigation. It provides an overview of the history of the patent claim and explores the legal application of the Bow Tie to patent claim construction.

A link to the Bow Tie Article; and a link to an article citing the Bow Tie Article

Title: Claim Construction Methodologies During U.S. Inter Partes and Post Grant Review Proceedings (February 12, 2012 - Published in Japanese and English). Journal of Towa Institute of Intellectual Property, Vol. 4, No. 2, pg. 13.

PRESENTATIONS

Expediting Patent Rights. (2005)

Patents are Business Tools (2007, 2008, and 2012);

Ex Parte and Inter Partes Reexamination: An Alternative To, Or In Conjunction With, Litigation (April 2007);

Restriction Practice Considerations in Patent Drafting and Prosecution (2012);

Panel Member, Inside of the Mind of a U.S. Patent Examiner (2015).

A link to the Patent Restriction Presentation

OTHER INTERESTS

Mr. Jones is also a patented inventor and owner of several issued U.S. Patents.

Examples: Patent 9100705 and Patent 8668561 and Patent 8337312

UDRP Decisions
Example 1 - epsonink.com, Example 2 - epsoninkjetsupply.com, and Example 3 - epsonforum.com.
Patent Cancellation by Ex Parte Reexamination
REEXAM 90/012,683 Example On Behalf of Third Party Requestor - Apr 2013 Expired due to reexamination which canceled all claims.