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Steven M. Jensen

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[email protected]

+1.617.348.1852

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Steve is an intellectual property attorney who specializes in patent prosecution and portfolio management for US and international companies in the semiconductor, automotive, telecommunications, consumer electronics, and other high technology fields. He helps clients obtain and enforce patents involving mechanical, electrical, computer hardware and software, materials science innovations, and business methods. His practice also encompasses strategic counseling, preparing infringement and validity opinions, patent litigation, and handling patent appeals before the US Patent and Trademark Office (USPTO). He was previously a patent examiner at the USPTO, where he reviewed manufacturing and packaging systems patent applications.

Steve's practice focuses on obtaining and enforcing US and international patents in the mechanical, electrical, computer, and materials science arts. He has prosecuted numerous patent applications for inventions including semiconductor devices, automotive systems and components including innovations in fuel cells, electric and hybrid electric drivetrains and transmissions, and autonomous vehicles, image processing devices, medical devices, network architecture, mobile devices, electronic games, household consumer products, and agricultural machinery.

Steve specializes in actively prosecuting and managing substantial patent portfolios for US and non-US companies of all sizes, including establishing and maintaining portfolios of utility and design patents. Steve readily uses cost-saving approaches to advance cases in the USPTO, including the After Final Consideration Pilot Program (AFCP 2.0) and Pre-Appeal Brief Request for Review, in order to advance prosecution and reduce incidence of appeals.

In addition, Steve counsels clients, prepares infringement and validity opinions, and provides litigation support and infringement/validity analysis for technologies such as electrophotographic reproduction systems, consumer products, and medical devices.

Steve’s practice extends to jurisdictions outside of the US and to intellectual property organizations. He has argued successfully in oral and written proceedings before the Patent Trial and Appeal Board. Following law school, Steve was a patent examiner at the USTO, where he examined patent applications in the fields of manufacturing and packaging systems and methods.

Education

  • Suffolk University Law School (JD, cum laude)
  • University of Illinois (BS, Mechanical Engineering)
  • University of Illinois (BA)

Experience

  • Prepared infringement and invalidity opinions for a major multinational consumer electronics firm
  • Follows a team-based approach to manage and prosecute an extensive patent portfolio for major Korean auto manufacturers
  • Maintains patent portfolios for European and Asian clients, including companies based in Japan, Korea, Taiwan, and China
  • Handles a substantial portfolio of utility patents for a prominent Taiwanese semiconductor packaging company

Recognition & Awards

  • Member, American Intellectual Property Law Association
  • Member, Boston Bar Association
  • Presenter, ACI Patent Reform Conference (New York, 2014)
  • Coach and Manager, Newton Little League (2010-20)

Viewpoints

With Software Patents and Means-Plus-Function, “Structure” Takes On a New Meaning

April 17, 2018 | Blog | By Steven Jensen, Jonathon Western

Software patents are generally directed to a sequence of steps or rules, i.e., an algorithm, performed by a computer programmed to carry out the algorithm.  Because algorithms are inherently functional in nature, software patent claims are frequently written using functional, as opposed to structural, terms.
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Rules and Practice Tips Regarding Official Notice at the U.S. Patent and Trademark Office

April 21, 2017 | Blog | By Steven Jensen, Jonathon Western

MPEP §2103(VI) states that when a rejection is imposed, the “Office action should clearly communicate the findings, conclusions and reasons which support them.”  Examiners commonly satisfy this requirement by citing one or more prior art references allegedly teaching each of the limitations of a claim.
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To Seek Design Protection or Not, That is the Question!

March 24, 2017 | Blog | By Steven Jensen

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection. This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.
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