Whether litigating a Section 337 case at the U.S. International Trade Commission, testifying as an expert witness in a high stakes trademark case, serving as the court-appointed master in a billion dollar biotech patent case, testifying before Congress regarding changes to the Lanham Act, or discussing needed changes to the patent statute at bar association meetings, Philip G. Hampton, II has been a multi-faceted IP practitioner. Phil’s practice spans more than thirty years and focuses on patent and trademark litigation, patent and trademark counseling, trademark prosecution, and licensing and merchandising agreements based on patents, trademarks, trade secrets, and copyrights as well as transactions related to the transfer of intellectual property pursuant to corporate acquisitions. As corporations and individuals continue to extract value from their intellectual property, Phil continues to think outside-of-the-box for his clients in order to find value-based business solutions to tough intellectual problems and issues.
As a freshly minted lawyer, Phil began his career as a patent attorney at a large IP boutique in New York. There, he learned the ropes of patent prosecution and patent litigation. Since then, Phil been involved in all aspects of patent litigation in district court and the ITC, as well as mini-trials and arbitrations and he has argued cases before the Federal Circuit. 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.
Early in his career, Phil also volunteered to learn trademarks, then a rather moribund practice at most IP firms. And learn trademarks he did - Phil has been involved in all aspects of trademark litigation in U.S. District Courts, mini-trials, ITC Section 337 hearings, and Trademark Trial and Appeal Board opposition and cancellation proceedings. Phil has 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.
Phil became so adept at trademark law that President Clinton nominated, and the United States Senate confirmed, Phil to be the Assistant Commissioner for Patents and Trademarks, responsible for the Trademarks Office (1994 - 1998). In that role, Phil 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. Under Phil’s leadership, the Trademark Office became one of the first government agencies to receive applications electronically from its customers, perhaps the first government agency to allow its staff to work at home and during his tenure, the customer service award winning Trademark Assistance Center was created. Phil advanced trademark jurisprudence by promulgating almost 200 Commissioner’s Decisions and overseeing the first new edition of the Manual of Trademark Examining Procedure in almost ten years. While at the PTO, Phil testified before Congress, represented the United States at diplomatic conferences and international meetings and spoke to dozens of bar associations and industry groups regarding trademarks and/or the operations of the USPTO. But even while heading up the Trademark Office, Phil stayed involved with developments in patent law: as a member of the executive staff of the USPTO, Phil provided senior level input on proposed changes to the Patent Act and the Manual of Patent Examining Practice.
Since his return to private practice in 1998, Phil 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. Because of his knowledge of the people and processes of the USPTO, Phil has conducted investigations of “atypical” prosecutions of both patent and trademark applications within the USPTO. And while not afraid to litigate, Phil tries to find cost effective means to resolve disputes. For example, once he convinced a district court judge to vacate his own published summary judgment decision and allow the parties in a patent infringement action to settle their patent dispute.
Throughout his career, Phil has worked to make intellectual property a more inclusive area of the law. To that end, he has mentored numerous minority and women law students and young lawyers, and his dedication was rewarded in 2016 when he was named an inaugural recipient of the Diversity in Tech Awards by the IP Section of the National Bar Association. He is the former President of the American Intellectual Property Law Education Foundation (“AIPLEF”) which since its inception in 2002, has awarded almost $2,000,000 in scholarships to minority IP law students. To share his love of trademark law, since 2009, Phil has taught trademark law at Howard University School of Law, one of the four historically black law schools. In every firm since returning to private practice, Phil has been a member of that firm’s Diversity Committee, including serving in a leadership position of the overall committee or important subcommittees.
Believing that a lawyer must be fully engaged with his or her community, Phil is active in educational activities, bar associations and civic affairs. For instance, Phil has served on the Visiting Committee of his law school alma mater and the IP advisory board of DePaul Law School. Phil has served on the board of directors of two national bar organizations, as chair or co-chair of prominent committees of the IP Section of the ABA, and as general counsel of the Washington Bar Association, the local African-American bar association. Phil is also a member of Leadership Greater Washington and the board of the Council for Court Excellence.
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.
Selected Publications and Speeches
- “The Mystifying World of World-Wide Branding,” 7th Annual IP Law Symposium, Florida Bar and Business Law Section, Orlando, FL, April 8, 2016
- “In re Tam: Will the Issue of Social Justice Reach the Supreme Court,” Howard University School of Law 13th Annual Intellectual Property and Social Justice CLE Seminar, Washington, DC, March 4, 2016