Speaker in Panel Session VIII – Patents – Prioritising priority rights
Monday, September 19, 2016 from 16.00 to 17.30
Abraham Hershkovitz is the founder and managing partner of Hershkovitz & Associates, PLLC. The Firm was founded in 2003. Details about the Firm may be found on the Firm’s website at www.hershkovitz.net.
Mr. Hershkovitz received a Bachelor of Engineering degree in Mechanical Engineering from the City College of New York in 1972.
Mr. Hershkovitz was employed by the United States Patent and Trademark Office (PTO) from 1972 to 1999. He began his career at the PTO as a Patent Examiner specializing in Power Plants and Fluid Controlled Motors. He became a Primary Examiner in 1979 and received recognition in 1986 as Expert in the field of Fluid Controlled Motors. During his tenure as an examiner, he received recognition for his outstanding service on an annual basis. He taught technical courses at the Patent Academy on the subject of fluid circuitry, expansible chamber motors, pumps, pressure gauges and sensors, and measuring and testing devices. The students were patent examiners, some of who were senior examiners examining patent applications in related technologies.
In 1988 he was selected as the Petitions Examiner on the staff of the Assistant Commissioner for Patents. That same year he received the U.S. Department of Commerce Bronze Medal for Superior Service. He attended management training for Executives and took a number of patent law courses as part of the George Washington Juris Masters Program offered at the PTO. In 1995 he was appointed to the position of Director of the Office of Petitions.
While working in the Office of the Assistant Commissioner for Patents, Mr. Hershkovitz worked on rule changes (37 CFR), had Notices published in the Official Gazette, worked on changes in patent laws (35 USC) and is the author of “Petitions Practice Within the PTO on Patent Matters” published in the March 1998 issue of the Journal of Patent and Trademark Society. The Petitions publication deals with petitions related to problems with filing dates, inadvertently abandoned applications and expired patents, propriety of examiners’ actions, etc. Mr. Hershkovitz was considered an authority on patent policy within the PTO. As such, he was frequently consulted by the PTO Director of the Office of Enrollment and Discipline relative to questions appearing on the admissions exam for new patent attorneys and agents.
Mr. Hershkovitz lectured to new patent examiners and new managers on petitions and patent policy related issues and made petitions and rule changes presentations to Patent Bar Association groups and via televideo conferencing to remote locations. He served as Resident Advisor to the Governments of Romania and the Republic of Moldova in 1993, 1995 and 1997 as part of the government to government assistance funded by the U.S. Agency for International Development. In that capacity, he was the principal organizer of an international conference and was a panelist along with officials from Patent Offices, judges and lawyers involved in intellectual property in other countries and the Chief Judge of the U.S. Court of Appeals for the Federal Circuit.
Mr. Hershkovitz joined a private intellectual property law firm in July 1999, where he oversaw prosecution of a number of patent cases primarily in the mechanical field, supervised attorneys and managed certain operations in the firm, including electronic filing of patent applications in the PTO. He lectured to a number of State Bar Associations (Arizona, Colorado, Illinois, Texas), the AIPPI, and foreign clients (Japan, Taiwan, South Korea, Romania, Hungary, the Czech Republic) on patent related matters, including recent changes in patent laws and regulations. He was frequently contacted by other major law firms and corporations to assist in matters before the U.S. PTO or to serve as an expert witness during litigation before the Courts. He served as Chair of the ABA (American Bar Association) Sub-committee on Electronic Filing, the IPO (Intellectual Property Organization) PTO Rules Committee and the ABA and AIPLA Sub-committees on PTO Rules and Regulations.
Mr. Hershkovitz testified as an expert witness on patent related matters including a criminal trial as an expert testifying for the Federal government and civil litigation related to patent infringement and patent validity. Additionally, Mr. Hershkovitz is retained by a number of large law firms and large corporations to assist in patent related prosecution and litigation matters.
In December 2003, Mr. Hershkovitz left the private law firm, where he worked for approximately five years, to practice patent law and provide consulting services as a member of the firm of Hershkovitz & Associates. Currently, he continues to prosecute patent applications before the PTO, specializes in petitionable matters and prosecution of Ex Parte Reexamination Procedings. Inter Partes Reviews, CBMs, PGRs, and other complex prosecution matters, serves as a consultant to other law firms and corporations on patent prosecution related matters and is engaged as an expert witness in patent litigation matters.