Michael Santonocito

Patent counsel grounded in physics and USPTO knowledge

Michael Santonocito focuses on patent procurement for clients large and small across an array of technologies. With a background in physics, he is especially knowledgeable in the area of networking, cloud computing and wireless communications, including applications in 5G technologies and the Internet of Things. Michael's experience also includes preparing prosecuting patent applications related to:

• Semiconductor devices
• Photonics, including imaging, flat screen display technologies and digital image projection
• Nuclear, plasma and quantum technology
• Nanotechnology
• Artificial intelligence

Michael prides himself on his ability to quickly assimilate a range of new technologies and his ability to generate creative solutions to serve his clients’ larger business interests. He is known for achieving results even when faced with difficult patent examiners and complex arguments.

Before beginning his career as a practicing attorney, Michael was a patent examiner in the U.S. Patent and Trademark Office (USPTO) optics group.

• Advises on and develops patent portfolio and global enforcement and defense strategies, including preparing post-grant challenges in multiple jurisdictions, such as PGR filings in the U.S, preparing and filing pre-issuance third-party submissions, and developing successful arguments against post-grant challenges filed by competitors.
• Helps clients’ research and engineering teams conduct invention harvesting sessions.
• Educates inventors on patent and non-patent IP avenues, including trade secrets.
• Prepares invalidity, patentability, freedom-to-operate and infringement opinions and analyses.

• Managed a key technology area of a patent portfolio of a multinational consumer electronics corporation.
• Defended a mid-size company in inter partes dispute over electromechanical devices.
• Successfully sought invalidation of competitor’s issued patent on behalf of a small biophotonics company.