Phil Hampton is Administrative Partner of the Washington, D.C. office of Haynes and Boone, LLP and a partner in the Intellectual Property Litigation Practice Group. Phil has more than 30 years of experience practicing intellectual property law as both a practitioner and an administrator, with a focus on patent and trademark litigation, patent and trademark counseling, trademark prosecution, and counseling with regard to the intellectual property aspects of the Internet. As corporations and individuals continue to extract value from their intellectual property, Phil has expanded his practice to include licensing and merchandising agreements based on patents, trademarks, trade secrets, and copyrights. He also has negotiated the transfer of intellectual property and prepared documents pursuant to corporate acquisitions.
From 1994 until 1998, Phil was the Assistant Commissioner for Trademarks at the USPTO. In that position, he had overall responsibility for trademark operations, and focused on restructuring the trademark registration process and improving the policies of the USPTO to align them more closely with the needs of its customers. He also testified before Congress and represented the United States at diplomatic conferences and international meetings. As a member of the executive staff of the USPTO, Phil provided senior level input on proposed changes to the Patent Act, the USPTO rules of practice, and the Manual of Patent Examining Practice.
With the exception of the nearly five years that he served as an Assistant Commissioner at the U.S. Patent and Trademark Office (USPTO), Phil has practiced continuously in both patent and trademark law. He has been an expert witness in several trademark infringement actions, and also has served as a Special Master in patent infringement actions for the U.S. District Court for the District of Maryland. Phil is AV® Peer Review Rated Preeminent by Martindale-Hubbell® Law Directory. In addition to his law degree, Phil holds an S.M and an S.B. in chemical engineering. Phil's areas of concentration include:
Intellectual Property Litigation
Phil has been involved in all aspects of patent and trademark litigation in U.S. District Courts, mini-trials, ITC Section 337 hearings, and Trademark Trial and Appeal Board opposition and cancellation proceedings. While not afraid to litigate, Phil tries to find cost effective means to resolve disputes. For example, he recently convinced a district court judge to vacate the judge's published summary judgment decision and allow the parties in a patent infringement action to settle their patent dispute in the interest of judicial economy.
Phil was the Assistant Commissioner for Trademarks for nearly five years. As CEO of the trademark operations in the United States, he oversaw the reengineering of the USPTO. He also promulgated almost 200 Commissioner’s Decisions and oversaw the first new edition of the Manual of Trademark Examining Procedure in almost ten years. In the years before and after his service at the USPTO, Phil prepared, filed, and prosecuted hundreds of U.S. and foreign trademark applications and prepared scores of trademark opinion letters. He also has prepared and filed appeals to the Trademark Trial and Appeal Board and conducted oppositions and cancellations.
Patent Prosecution and Counseling
Phil has prepared, filed, and prosecuted U.S. and foreign patent applications. He has prepared opinions regarding patentability, validity, and infringement issues, and participated in appeals before the Board of Patent Appeals and Interferences. He also has conducted interviews of examiners, SPEs, and technical center directors at the USPTO. Because of his knowledge of the people and processes of the USPTO, Phil has conducted investigations of “atypical” prosecutions of patent applications within the USPTO.
Speeches and Presentations
- "Searching and Clearing Traditional and Non-Traditional Marks," Speaker, Advanced Trademark Law Annual Review, Practising Law Institute, New York, NY, April 3, 2014.
- "From Betty Boop and Red Soles to Goats on the Roof," Presenter, National Bar Association Annual Convention, Miami, Florida, July 30, 2013.
- "Contemporary Developments in IP Protection (Part I): From Deceptive Mis-Description to the Rise of Color Marks," Speaker, Howard University Law School’s Annual IP CLE Program, Washington, D.C., March 8, 2012.
- "Ethics in Trademark Practice," Panelist, IPO Annual Meeting, Los Angeles, California, September 13, 2011.
- "Patent Trolls & Other Monsters Driving the Patent Litigation Freight Train," Panelist, MCCA 2011 CLE Expo, Chicago, Illinois, March 16, 2011.
- "How the Internet is Reshaping Trademark Law," Georgia State Bar Intellectual Property Program, February 2010.
- "ITC Litigation," Speaker, Korea Electric Association (KEA) IP Seminar, Seoul, South Korea, September 28, 2010.
- "Trademark Prosecution - Other Substantive Refusals and Acquired Distinctiveness," PLI - Navigating Trademark Practice Before the PTO 2009, February 2009.
- "In the Aftermath of In re Bilski," Speaker, PLI Patent Litigation 2009, October 6, 2009.
- "The Politics of the United States Patent and Trademark Office: A View from Inside…A Conversation with Philip G. Hampton, II," Speaker, Patent and Trademark Committees Teleconference Meeting, March 18, 2009.
- "Trademark Prosecution - Other Substantive Refusals and Acquired Distinctiveness," PLI - Navigating Trademark Practice Before the PTO 2008, February 2008.
- "Trademark Prosecution - Other Substantive Refusals and Acquired Distinctiveness," Speaker, PLI - Navigating Trademark Practice Before the PTO 2007, February 2007.
- "Cost Effective Pretrial Proceedings," Panelist, BNA - Patent Litigation Strategies Update, November 2006.
- "Ex Parte Appeals," Speaker, PLI - Navigating Trademark Practice Before the PTO 2006, February 2006.
- "The Future of the REDSKINS Trademark," Moderator, D.C. Bar Luncheon Program, May 2005.
- "Dealing With Cyberclaims," Speaker, ALI-ABA - Internet Law for the Practical Lawyer, April 2005.
- "Petitions to the Commissioner," Speaker, PLI - Navigating Trademark Practice Before the PTO, February 2005.
- "Advanced Trademark Litigation," Panelist, INTA, May 2004.
- "Informalities Issues in Ex Parte Prosecution," Speaker, PLI - Navigating Trademark Trial and Appeal Board Practice, March 2004.
- "Joint Development and Intellectual Property," Speaker, Dingman Center for Entrepreneurship - 3rd Annual BioEntrepreneur Forum, June 2003.
- "The Trademark Legislative Agenda," Moderator, D.C. Bar Luncheon Program, April 2003.
- "Gatoring, Linking, Metatags and Other Ways to Commit (and Avoid) Trademark Infringement," Speaker, AIPLA Annual Meeting - Copyright, Trademarks, and Trade Secret Litigation, October 2002.
Additionally, Phil has taught the Trademark Law course at Howard University every fall since 2009.
- Recognized in World Trademark Review (WTR) 1000 (2011, 2013). In 2013, clients surveyed by WTR praised Hampton for his "rare level of procedural insight, which he combines with litigation and counseling nous honed over many years in private practice."
- Recognized in Expert Guides 2011
- Named a "Top Minority IP Partner" in Diversity & the Bar, May/June 2003
- Named one of "America's Top Black Lawyers" by Black Enterprise Magazine, 2003
- American Intellectual Property Law Education Foundation
- President, 2008-2011
- Chairman, Scholarship Committee, 2004-2008
- American Bar Association, Intellectual Property Law Section
- Co-Chair, Trademark Legislation Committee, 2007-2008
- Chair, PTO-Trademarks Committee, 2005-2007
- American Intellectual Property Law Association (AIPLA), Board of Directors, 2004-2007
- Master, Giles S. Rich American Inn of Court, 2004-2008
- DePaul University College of Law, Intellectual Property Advisory Board, 1999-2003
- National Bar Association, Life Member
- Executive Committee, 1990-1993
- Board of Governors 1989-1994
- Chair, Intellectual Property Section 1989-1991
- Chair, Budget Committee, 1992-1993
- International Trademark Association, member of various committees
Selected Representative Experience