Pranay Pattani

Practices

Education and Clerkships

J.D., Catholic University of America Columbus School of Law, 2012

B.S., Electrical and Computer Engineering, Rutgers, The State University of New Jersey, 2003, with honors

Admissions

Texas

Virginia

District of Columbia

U.S. Patent and Trademark Office

Languages

Hindi

Gujarati

Marathi

Profile

Pranay Pattani is an associate in the Intellectual Property Practice Group at Haynes and Boone.

Post-Grant Proceedings

Pranay’s practice focuses on post-grant patent proceedings before the Patent Trial & Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO). A hands-on attorney, Pranay works closely with clients to develop advanced strategies to further the clients’ interests in the marketplace. His day-to-day activities include preparing and filing petitions and responses associated with post-grant proceedings. Pranay leverages his technical background to assist technical experts in preparing for depositions and in drafting expert declarations.

Patent Procurement

Pranay counsels clients serving to protect and leverage their intellectual property rights.  Pranay’s practice enables cost-effective global protection of clients’ core technologies and recognition of the same as international standards. His experience includes managing all aspects of patent procurement including interviewing inventors to identify patentable subject matter, preparing applications, and prosecuting the applications at the USPTO, including Appeals. Pranay is highly experienced in negotiating with examiners to facilitate compact prosecution and issuance of patents with claims having desired scopes. He also studies industry standards and competitors’ products while strategically prosecuting claims in anticipation of litigation.

Due Diligence, Opinions, and Agreements

Pranay’s practice extends to performing due diligence investigations including evaluating a target company’s intellectual property to assist a client in deciding on potential acquisition of the target company. Pranay also evaluates numerous patent acquisition opportunities proposed to clients regularly. In addition, he is experienced in authoring opinion letters, conducting patentability and infringement analyses, and negotiating agreements on behalf of clients.

Litigation

Pranay is experienced in providing litigation support including performing case assessments for patent lawsuits and filing documents with the courts. Pranay specializes in conducting infringement and invalidity analyses.

Prior to Law Practice

Prior to practicing law, Pranay was an electrical engineer with Motorola for several years. He specialized in wireless communication and power management circuitry in mobile devices. As a lead, Pranay oversaw design, implementation, and verification of the circuitry from early schematic concepts through product launch and into maintenance of line support.

Pranay also held a position as a technical reviewer on Motorola’s Patent Committee. In his role, Pranay reviewed and evaluated patent disclosures submitted by Motorola employees, and acted as a liaison between the inventors and the patent attorneys regarding the feasibility of the submitted disclosures.

Newsletter

IP Beacon

The IP Beacon

The IP Beacon is a Haynes and Boone Newsletter highlighting current issues and trends in Intellectual Property Law. Read the latest issue...

Selected Publications and Speeches

  • "Startups and Intellectual Property," presenter, UT Dallas, Comet Accelerator, March 2017.
  • "Federal Circuit May Be Setting Stage For Big Obviousness Changes," co-author, Law360, March 21, 2017.
  • "Legal Issues Facing Startups," presenter, UT Dallas, Comet Accelerator, November 2016.

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