Eric Sophir develops and implements strategies that obtain, protect, and monetize meaningful patents for startups to Fortune 50 companies.
An intellectual property partner with Foley & Lardner LLP, Eric counsels clients on protecting innovations gaining market share the risks and value associated with acquiring, licensing, or otherwise commercializing a patent portfolio resolving patent disputes and monetizing patents. His practice includes patent preparation and prosecution; infringement and validity analysis in patent litigation; licensing and selling; due diligence; clearance and landscape analysis; and post-grant proceedings. He also advises on prosecution strategies to better protect a product or more effectively deter competitors. His practice emphasizes portfolio development, including invention harvesting and patent filing strategies.
Eric has litigation experience and handles complex patent disputes at the federal district courts and Federal Circuit, arbitration, and re-examination proceedings. He also conducts analyses and prepares opinions regarding patent infringement, invalidity, and enforceability. Eric counsels clients in offensive and defensive actions involving competitors as well as non-practicing entities (NPEs).
According to Chambers USA, “Eric is a very strategic and thoughtful lawyer who is exceptional at what he does.”
While studying engineering at Cornell University, Eric conducted research for Professor L. F. Eastman regarding the growth and use of gallium nitride, a III-V semiconductor. One aspect of the research was attempting to grow a semiconductor that would emit a wavelength suitable for blue light.
Awards and Recognition
- Chambers USA: America’s Leading Lawyers for Business – Intellectual Property: Patent Prosecution, District of Columbia (2013-2023)
- Intellectual Asset Management (IAM) magazine’s Patent 1000 – Patent Prosecution (2019-2021)
- Intellectual Asset Management (IAM) magazine’s Strategy 300: The World’s Leading IP Strategists (2021)
- The Legal 500 – Patent Prosecution (including reexamination and post-grant proceedings) (2019)
- Super Lawyers® (Washington, D.C.) – Intellectual Property (2016-2019)
- Euromoney – Patent Expert (2015-2017, 2022)
Affiliations
- Dean’s Advisory Council, University of New Hampshire Franklin Pierce School of Law (2018-present)
- Mentor, C5 Accelerate (2020-2021)
- Mentor, Verizon Forward for Good Accelerator (2023)
- Editorial board member, Law360, Intellectual Property (2013-2015)
- Advisory board member, Patents for Financial Services Summit (2012-2015)
Presentations and Publications
- Co-Author, “Web IP Ruling Illustrates Ways To Clear Hurdles To Eligibility,” Law360 (Nov. 4, 2022)
- Co-author, “Striking a Balance between Quality and Value in a Patent Portfolio,” IP Watchdog (Oct. 27, 2022)
- Co-author, “5 Key IP Considerations for AI Startups,” TechCrunch+ (Oct. 7, 2022)
- Co-author, “Intellectual Property Risks in the Metaverse: Protection, Jurisdiction and Enforcement,” IP Watchdog (July 18, 2022)
- Co-author, “Key Strategies for Patenting Big Data Solutions,” Law360 (April 18, 2022)
- Co-author, “Blockchain for Digital Logistics and Smart Warehouses,” Dashboard Insights (Feb. 10, 2022)
- Co-author, “Not by the Same Token: NFTs in Supply Chain,” Manufacturing Industry Advisor (Nov. 16, 2021)
- Co-author, “Patent Portfolio Development Considerations for NFT Innovations,” IAM (July 15, 2021)
- Co-author, “Telemedicine Companies Can Use Patent Law as a Strategic Advantage,” Health Care Law Today (June 8, 2021)
- Co-author, “Patenting Strategies for Nonfungible Token Technology,” Law360 (March 25, 2021)
- Co-author, “The Robot’s Invention: Patent Considerations In AI,” Law360 (July 9, 2018)
- Moderator, “The Future is Now: Managing a Successful In-House IP Practice,” Foley’s 18th Annual IP Conference (October 14, 2022)
- Moderator, “Framework for Strategic Patenting & Portfolio Management,” Global IP ConfEx (June 15, 2022)
- Moderator, “How to best protect, enforce and exploit IP in the AI and IOT Era,” Conference Gorilla (May 9, 2022)
- Panelist, “The Blockchain as a Means for Technology Transfer,” 2022 AUTM Annual Meeting (Feb. 22, 2022)
- Panelist, “Adapting the IP System to New Technologies,” IPR Gorilla Virtual IP Conference (Feb. 17, 2022)
- Moderator, “Patents Versus Trade Secrets: What You Need to Know and How Can We Choose between Them?” IPR Gorilla Virtual IP Conference (Nov. 10, 2021)
- Adjunct Instructor, “Technology Transactions – IP Strategy I & II,” Cornell University Technology & Entrepreneurship Program, New York, New York (Oct. 20 and 21, 2021)
- Presenter, “NFTs: Legal Issues and Opportunities,” ABA Business Law Section (Sept. 24, 2021)
- Presenter, “Minting & Selling an NFT,” Foley Webinar (Sept. 14, 2021)
- Presenter, “How patents encourage innovation in technological development and deployment?” IPR Gorilla Virtual IP Conference (Aug. 26, 2021) (voted best session)
- Presenter, “Patents as NFTs: Tokenization and Implications for Ownership, Valuation, and Licensing; Securities Law Compliance,” Strafford Webinar (July 20, 2021)
- Presenter, “Blockchain & Tackling NFTs in Sports & Entertainment,” Foley Webinar (June 29, 2021)
- Presenter, “NFTs: Exploring the Legal and Business Challenges of Monetizing Unique Content with Digital Assets,” Foley Webinar (May 20, 2021)
- Presenter, “The Value of Patents in Distribution and Franchise Ecosystems: Gaining Competitive Advantage Through Intellectual Property Assets,” Foley Webinar (May 13, 2021)
- Presenter, “IP Trending Challenges in Future of the Internet of Things (IoT),” IPR Gorilla Virtual IP Conference (April 8, 2021)
- Presenter, “Knowing When and How to Pivot 2.0,” Foley’s 16th Annual IP Conference (Oct. 16, 2020)
- Moderator, “Impact on IP Business – The new reality post-pandemic,” IPR Gorilla Virtual IP Conference (Sept. 23, 2020)
- Moderator, “Reducing patent prosecution spend while increasing likelihood of allowability,” IP Law & Management Institute, West Lake Village, California (Nov. 3, 2019)
- Adjunct instructor, “Technology Transactions – Patent Prosecution,” Cornell University Technology & Entrepreneurship Program, New York, New York (Oct. 3, 2019)
- Moderator, “Advanced Patent Portfolio Strategies,” IP Law & Management Institute, Los Angeles, California (Nov. 4, 2018)
- Adjunct Instructor, “Technology Transactions – Patent Prosecution,” Cornell University Technology & Entrepreneurship Program, New York, New York (Sept. 27, 2018)
- Moderator, “Increase patent portfolio value by optimizing and strengthening patent assets using various Patent Office procedures,” 15th Annual Patents for Financial Services Summit, New York, New York (July 25-26, 2018)
What You Need to Know: A Review of Notable Telehealth Tools, Software, and Technology Infrastructure
In connection with the American Telemedicine Association’s (ATA) Telehealth Awareness Week, partner Eric Sophir, co-chair of the firm’s Data Analytics/Intelligence Area of Focus, will be speaking on the ATA’s Telehealth Technology Special Interest Group’s panel “What You Need to Know: A Review of Notable Telehealth Tools, Software, and Technology Infrastructure.”
Protecting Innovations in SaMD & Biomedical Applications
With the ever-growing adaptation of software in all realms of health care, the market for software for medical devices is forecasted to grow 16.7% per year over the next decade and surpass $5 billion by 2032.
IP Contracting Considerations for Software as a Medical Device (SaMD)
Medical devices are increasingly integrating software, including AI models, which necessitates that stakeholders recognize the value of their IP.
Foley Earns Top Rankings in Chambers USA 2023
Foley & Lardner LLP is pleased to announce that it has again been recognized by Chambers & Partners as one of the top law firms in the country in the 2023 edition of Chambers USA, America’s Leading Lawyers for Business.
Software as a Medical Device: Challenges Facing the Industry
We are excited to announce that this article is the first of a series addressing Software as a Medical Device and the issues that plague digital health companies, investors, clinicians and other organizations that utilize software and medical devices.
Foley Represents Torc Robotics in Acquisition of Algolux
Foley & Lardner LLP served as legal adviser to Torc Robotics, a pioneer in commercializing self-driving vehicle technology, in closing a strategic transaction to acquire Algolux Inc., an internationally recognized leader in autonomous vehicle perception technology.