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 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 others, and consideration of available challenges to the IP acquired by competitors.

PROFESSIONAL EXPERIENCE

Mr. Jones joined Nadesan Beck of Counsel in February of 2014. Mr. Jones was an equity shareholder and co-founder of Maschoff Brennan located in Park City, Utah. Mr. Jones was a non-equity partner of Workman Nydegger located in Salt Lake City, Utah. Prior to law school, Mr. Jones was a United States Patent Examiner at the United States Patent and Trademark Office. Mr. Jones holds approximatey two dozen patents and is named inventor of approximately half of those patents.

Mr. Jones has extensive experience prosecuting United States and international patent applications in a number of technical fields including: computer software and hardware inventions, mechanical, electrical and chemical inventions, geospatial and metrology technologies, image data analysis, biometric sensors, fitness equipment, outdoor camping, hiking, and snorkeling equipment, ink/paper printing, polymer/3-D printing, semi-conductor inventions including laser design, optical communications, mining and agricultural equipment, contact handling center software, social communications, entertainment inventions including multi-media and video game technology, social media inventions, cloud computing, neutraceuticals, and medical inventions including catheters, endoscopes, and other endovascular medical devices.

Mr. Jones has coordinated patent prosecution abroad in Europe, Asia (Japan, China, and Taiwan), South America, Australia, and Canada according to the PCT and direct Paris filings. Mr. Jones has also filed U.S. domestic patent applications claiming priority to foreign applications in those countries.

Mr. Jones helps clients develop and manage IP portfolios for large corporations, start-up companies, and individuals. Mr. Jones has tailored the IP strategy with each client including consideration of the clients needs, goals, risks, opportunities, and resources. Mr. Jones counsels clients on post-grant protection measures including licensing, traditional litigation, administrative challenges, and inter-partes patent trials.

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 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 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 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 helps develop corporate strategies for IP protection, asset procurement, enforcement, defensive protection, risk management, and IP monetization. Mr. Jones has drafted patent infringement and invalidity opinions as well as advisory memoranda related to patent, trademark, unfair competition, antitrust, and copyright matters.

As a former United States Patent Examiner Mr. Jones 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 Bar, the Utah state courts, and the United States District Court, District of Utah.

Mr. Jones is admitted to the U.S. Court of Appeals for the Federal Circuit.

Mr. Jones is admitted to practice before the United States Patent and Trademark Office.

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;

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

a link to an Amicus Brief for EMC Corporation to the Supreme Court of the United States in Cuozzo Speed Technologies, LLC v. Lee 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, 2012, 2018).

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).

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.

OTHER INTERESTS

Mr. Jones is a patented inventor and patent holder of several issued U.S. Patents.

Examples: Patent 10029422;

Patent 9925444;

Patent 9602879;

Patent 9555333;

Patent 9522332;

Patent 9492725;

Patent 9277282;

Patent 9198943;

Patent 9100705;

Patent 8668561; and

Patent 8337312

Co-Founder of Vietnam Water Project Inc., a Section 501(c)(3) non-profit clean water project in Vietnam (est. 2013).