Eric L. Sophir

Eric Sophir is 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 provides advice on prosecution strategies to better protect a product or more effectively deter competitors. His practice has a particular emphasis on portfolio development, including invention harvesting and patent filing strategies. Eric's clients range from startups to Fortune 50 companies.

Eric has litigation experience and has worked in complex patent disputes at the federal district courts and Federal Circuit, arbitration and re-examination proceedings. He has also conducted analyses and prepared opinions regarding patent infringement, invalidity and enforceability. Eric’s practice also includes counseling clients in offensive and defensive actions involving competitors as well as non-practicing entities (NPEs).

Earlier in his career, Eric was an extern for Judge Randall Rader (ret), former chief judge of the U.S. Court of Appeals for the Federal Circuit. During law school, Eric was a senior editor for IDEA: The Journal of Law and Technology. He also received the highest grade in his "Trademark and Unfair Competition Law" class and later served as a teaching assistant.

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.

Recognition

• Listed, Chambers USA: America’s Leading Lawyers for Business, Intellectual Property: Patent Prosecution, District of Columbia (2013-2022)
• Recommended, Intellectual Asset Management (IAM) magazine’s Patent 1000 in the area of Patent Prosecution (2019-2021)
• Recommended, Intellectual Asset Management (IAM) magazine’s Strategy 300: The World’s Leading IP Strategists (2021)
• Recommended, The Legal 500 in the area of Patent Prosecution (including reexamination and post-grant proceedings) (2019)
• Listed, Super Lawyers® (Washington, D.C.), Intellectual Property, Thomson Reuters (2016-2019)
• Listed, Euromoney, Patent Expert (2015-2017, 2022)

Professional Memberships

• Dean’s Advisory Council, University of New Hampshire Franklin Pierce School of Law (2018-2022)
• Mentor, C5 Accelerate (2020-2021)
• Editorial board member, Law360, Intellectual Property (2013-2015)
• Advisory board member, Patents for Financial Services Summit (2012-2015)

Education

• Franklin Pierce Law Center (now University of New Hampshire) (J.D.)
• Cornell University (B.S.)

Admissions

• District of Columbia
• Virginia
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the Fourth Circuit
• U.S. District Court for the Eastern District of Virginia
• U.S. Patent and Trademark Office

Publications

• Co-Author, “Web IP Ruling Illustrates Ways To Clear Hurdles To Eligibility,” Law360 (November 4, 2022)
• Co-Author, “Striking a Balance between Quality and Value in a Patent Portfolio,” IP Watchdog (October 27, 2022)
• Co-Author, “5 Key IP Considerations for AI Startups,” TechCrunch+ (October 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 (February 10, 2022)
• Co-Author, “Not by the Same Token: NFTs in Supply Chain,” Manufacturing Industry Advisor (November 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)
• Co-Author, "McRo Decision Gives Software / Computer-based Patents a Big Boost," iPFrontline (September 19, 2016)
• Chapter author, "Developing a Patent Strategy," Aspatore Books (February 1, 2016)
• Quoted, "Lawyers Weigh In On High Court's Software Patent Ruling," Law360 (June 19, 2014)
• Co-Author, "The State of Section 101 (For Now)," 5th Annual Advanced Patent Law Institute (January 21, 2010)
• Co-Author, "Product-by-Process Claims: One Size Fits All?," IP Law360 (December 2, 2009)
• Co-Author, "Federal Circuit Decision in In re Bilski Requires Machine-or-Transformation for Process Claims to Qualify as Patent Eligible Subject Matter," ALI-ABA, Transformers Wanted? In re Bilski Cuts Back on Business Methods (December 2, 2008)
• Co-Author, "Speaking Patent Law on Wall Street," IP Law360 (June 4, 2008)

Presentations

• 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 (February 22, 2022)
• Panelist, “Adapting the IP System to New Technologies,” IPR Gorilla Virtual IP Conference (February 17, 2022)
• Moderator, “Patents Versus Trade Secrets: What You Need to Know and How Can We Choose between Them?,” IPR Gorilla Virtual IP Conference (November 10, 2021)
• Adjunct Instructor, "Technology Transactions – IP Strategy I & II," Cornell University Technology & Entrepreneurship Program, New York, NY (October 20 and 21, 2021)
• Presenter, “NFTs: Legal Issues and Opportunities,” ABA Business Law Section (September 24, 2021)
• Presenter, “Minting & Selling an NFT,” Foley Webinar (September 14, 2021)
• Presenter, “How patents encourage innovation in technological development and deployment?,” IPR Gorilla Virtual IP Conference (August 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 (October 16, 2020)
• Moderator, “Impact on IP Business – The new reality post-pandemic,” IPR Gorilla Virtual IP Conference (September 23, 2020)
• Moderator, “Reducing patent prosecution spend while increasing likelihood of allowability,” IP Law & Management Institute, West Lake Village, CA (November 3, 2019)
• Adjunct Instructor, "Technology Transactions - Patent Prosecution," Cornell University Technology & Entrepreneurship Program, New York, NY (October 3, 2019)
• Moderator, “Advanced Patent Portfolio Strategies,” IP Law & Management Institute, Los Angeles, CA (November 4, 2018)
• Adjunct Instructor, "Technology Transactions - Patent Prosecution," Cornell University Technology & Entrepreneurship Program, New York, NY (September 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, NY (July 25-26, 2018)
• Adjunct Instructor, "Technology Transactions - Patent Prosecution," Cornell University Technology & Entrepreneurship Program, New York, NY (October 18, 2017)
• Moderator, "Identify Best Practices at the Patent Office," 14th Annual Patents for Financial Services Summit, New York, NY (July 19-20, 2017)
• Moderator, "Quantifying & Communicating IP Value to Stakeholders," IP Management Forum, Newport Beach, CA (June 12, 2017)
• Adjunct Instructor, "Technology Transactions - Intellectual Property Due Diligence," Cornell University Technology & Entrepreneurship Program, New York, NY (April 12, 2017)
• Moderator, "Advanced Patent Portfolio Development Tactics," IP Law & Management Institute, West Lake Village, CA (November 6, 2016)
• Presenter, "Navigating US Government Contracting From an IP Perspective," ACC Conference, San Francisco, CA (October 17, 2016)
• Instructor, “Intellectual Property,” MaRS Entrepreneurship, Unit 5, Toronto, ON (October 20, 2016)
• Adjunct Instructor, "Technology Transactions - Patent Prosecution," Cornell University Technology & Entrepreneurship Program, New York, NY (September 14, 2016)
• Moderator, "Cultivate Patent Innovation as a Strategic Imperative," 13th Annual Patents for Financial Services Summit, New York, NY (July 20-21, 2016)
• Moderator, "Getting The Most Value Out Of Outside Counsel And Legal Service Providers," Global IP Management Forum, Newport Beach, CA (June 6, 2016)
• Moderator, "Advanced Patent Portfolio Development Tactics," IP Law & Management Institute, Newport Beach, CA (November 1, 2015)
• Moderator, "Develop Key Business Practices for Successful Management of Patent Portfolios," 12th Annual Patents for Financial Services Summit, New York, NY (July 22–23, 2015)