Aashish R. Karkhanis
Associate
Aashish Karkhanis draws on his combination of legal, government, and business expertise to help clients achieve their business and policy goals. Clients benefit from his over 15 years of experience in intellectual property roles, including private practice, federal service as a patent examiner, and corporate management roles involving intellectual property.
As an intellectual property (IP) attorney, Aashish has unique insight across the entire lifecycle of patent development and value generation. He brings both insider knowledge of regulatory processes as a former Examiner at the U.S. Patent and Trademark Office, and deep in-the-trenches transactional experience in identifying and negotiating IP licensing agreements on behalf of leading technology companies. He uses this holistic expertise to counsel on developing valuable IP tailored to the product launches, investor goals, and competitive environments surrounding every innovation.
Aashish has published and lectured on developing IP law and policy in cutting-edge issues around software and computer-related IP, including with Stanford University and the University of California at Berkeley. His thought leadership has been incorporated into US government policy analysis, including with the White House Office of Science and Technology Policy.
Counseling in Artificial Intelligence (AI)
With a research and development background in artificial intelligence and robotics technologies, Aashish provides high-touch counseling directly with engineers, product managers, corporate counsel, and engineering executives. His practice focuses on developing robust IP protection around bet-the-company and first-mover technologies. His engineering background includes design and coding of software, and design and assembly of hardware, in areas including autonomous robotics systems, genetic algorithms, and custom language engines. Aashish also regularly counsels on IP strategy for companies integrating AI into life sciences technologies.
Technology Commercialization & Transactions
Aashish is active in counseling on leveraging foundational technologies, including identifying those technologies best suited for transaction or commercialization. He has developed monetization strategies for both new and mature IP portfolios, across a wide swath of industries including AI, semiconductors, networking, cloud infrastructure, and medical device technologies.
Representative Experience*
Intellectual Property Counseling & Patent Prosecution
- Represented a Unicorn corporation to develop patents on core machine learning (ML) products. Led market analysis of machine learning and artificial intelligence (AI) technologies. Focused on protecting key market applications in ML and AI in advance of product launches.
- Represented a robotics startup corporation to develop a segment of the “first 100” patents on core IP assets. Transformed “blue sky” technical conversations into multiple patent families ready for investor evaluation.
- Represented a Fortune 50 company to develop first-mover patents on generative AI technology. Led assessment of readiness of technology for IP protection and developed patent portfolio to protect key product lines.
Intellectual Property Transactions & Advisory
- Represented a Fortune 100 company in a licensing transaction of substantially all US patents of the company. Led development of patent valuation strategy, led marketplace analysis, and guided licensing negotiations.
- Acquired patent license relevant to search engines on behalf of a Fortune 50 Internet search company. Led negotiation of technology value, identified key transaction parties, and directed diligence.
- Acquired patent license relevant to computer architecture and computer networking. Led negotiation of technology value, identified key transaction parties, and directed diligence.
- Acquired patent license relevant to computer networking from a Fortune 1000 computer networking company winding down a business unit. Led negotiation of business and contract terms, identified key transaction parties, developed financial model, and directed diligence.
- Acquired patent license relevant to digital payment processing from a Fortune 500 payment processing technology company. Identified key transaction parties, developed financial model, and directed diligence.
- Acquired patent license relevant to computer networking from a leading semiconductor company. Led negotiation of business and contract terms, identified key transaction parties, developed financial model, and directed diligence.
- Acquired patent license relevant to search engines on behalf of a Fortune 50 business software company. Led negotiation of technology value, identified key transaction parties, and directed diligence.
- Led assessment of technology value of patent portfolio relevant to search engines and computer architecture of a leading Internal portal company. Led assessment of technology value, identified key transaction parties, and directed diligence.
Corporate Governance
- Represented a nonprofit corporation in modification of board governance structure. Consulted with board members, and senior executive leadership to modernize long-term board operations in view of growth of the corporation.
- Represented a nonprofit corporation in a change of its nonprofit status. Conducted oral and written advocacy before the Office of Charitable Trusts of the Attorney General of California, and the California Secretary of State.
*Some matters handled prior to joining Foley.
Community Involvement
- Trustee of the Tenderloin Community Benefit District
- Volunteer providing guidance on strategic direction and growth of long-term community impact for the families, community businesses, and children of San Francisco’s historic Tenderloin neighborhood
Presentations and Publications
- 19 Stanford Technology Law Review 196 (2016)
- 15 Wake Forest Journal of Business & Intellectual Property Law 203 (2015)
- Berkeley Engineering (2015), Stanford Law School (2015), Berkeley Law (2014)
- Executive Office of the President, “Patent Assertion and U.S. Innovation” (citation, 2013)
- USPTO Software Partnership Roundtable (Stanford, CA, 2013)
AI in Health Care: Powering Patient Outcomes
