Mr. Penny’s passion for technological innovation fuels Jack’s ability to effectively identify and strategically protect his clients’ intellectual property by creating and managing robust global patent / intellectual property portfolios. Jack also prepares opinions concerning infringement, validity, unenforceability and patentability, performs patent litigation and intellectual property licensing.

Mr. Penny has expertise in a wide range of technologies in the mechanical, electrical, and electro-mechanical technical fields including medical instruments and devices, printer and imaging technology, marine technology, semiconductors, space technology, wireless technology, manufacturing, automobile technology, energy storage, computer hardware and software, aircraft technology, and heavy machinery. Mr. Penny also assists foreign-based high-tech clients in establishing corporate presence in Boston and provides strategic legal advice on how to effectively grow their business in the U.S. In addition, he has extensive experience conducting oral hearings and post-grant patent proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB).

Prior to attending law school, Mr. Penny worked as a control systems engineer for Hughes Aircraft Company in Los Angeles, California where he was responsible for the design, analysis, simulation and testing of attitude control systems for communications satellites. He also worked at Seiko Epson Corporation in Nagano, Japan as in-house patent counsel, where, in addition to the preparation and prosecution of all U.S. patent applications for ink-jet printers, laser printers, impact printers and scanners, he assisted in U.S. patent litigation, developed an inventor notebook program, led redesign efforts, and conducted lectures and client counseling on all aspects of U.S. patent law. In addition, Mr. Penny also worked as a law intern in Tokyo, Japan at a large chemical company preparing U.S. patent applications, patent licensing agreements and technology licensing agreements for petrochemical processes and related technologies.

Prior to joining Potomac Law, Mr. Penny was a Partner at Womble Bond Dickinson.

Mr. Penny has lectured extensively throughout the U.S., Europe and Asia on various topics of U.S. patent law to various international Intellectual Property groups.

Representative Experience

  • Successfully secured broad patent coverage for products in many technical fields including medical instruments and devices, printer and imaging technology, marine technology, semiconductors, space technology, wireless technology, manufacturing, automobile technology, energy storage, computer hardware and software, aircraft technology, and heavy machinery.
  • Negotiated patent licensing agreements.
  • Advised large U.S., European and Asian manufacturers on the issues of infringement, validity, and enforceability for hundreds of patents in the various technical fields.
  • Successfully led efforts to redesign products to avoid patent infringement in the U.S.
  • Successfully conducted oral hearings and post-grant patent proceedings before the USPTO’s Patent Trial and Appeal Board (PTAB).
  • Developed and implemented trade secret protocols to effectively identify and protect IP that is best protected through Trade Secret protection.

Publications and Speeches

  • How to Effectively Harvest Innovation, co-author, IP Magazine, August 2017
  • Design Patent Damages in the U.S. – Samsung Electronics v. Apple, AIPLA IP Practice in Europe and the Chartered Institute of Patent Attorneys (CIPA) Joint Meeting, London, June 2017
  • Overview of U.S. Patent System, speaker, Seoul National University School of Business, Seoul, Korea, April 2016
  • The Duty to Disclose in the U.S., speaker, Japanese Patent Office, Tokyo, Japan, 2016
  • Duty to Disclose in the U.S., speaker, American Intellectual Property Law Association (AIPLA) Japan Practice Committee Intellectual Property Summer Seminar, Japan, April 2016
  • Duty to Disclose in the U.S. speaker and Doing Business in Japan speaker, American Intellectual Property Law Association (AIPLA) Japan Practice Committee Mid-Winter Meeting, La Quinta, CA, January 2010
  • Tafas v. Doll, U.S. PTO Final Rules, speaker, Japan Patent Attorney Association (JPAA), Tokyo Japan, April, 2009
  • Patent Exhaustion - Quanta Computer v. LG Electronics, speaker, joint meeting with Japan Patent Attorney Association (JPAA) and American Intellectual Property Law Association Japan Practice Committee, and Japanese Intellectual Property Association (JIPA), Tokyo, Japan, April, 2008
  • New Claims and Continuation Practice before the U.S. Patent and Trademark Office, speaker, Tokyo, Japan, October 10, 2007 and Osaka, Japan, October 11, 2007
  • Recent Developments at the Federal Circuit, speaker, joint meeting with Japan Patent Attorney Association (JPAA) and American Intellectual Property Law Association Japan Practice Committee, Tokyo, Japan, April, 2007
  • Recent Developments in U.S. Patent Law, speaker, joint meeting with Japan Patent Attorney Association (JPAA) and American Intellectual Property Law Association Japan Practice Committee, Tokyo, Japan, April, 2006
  • Recent U.S. Supreme Court's Review of Intellectual Property Cases, lecturer, American Intellectual Property Law Association, Mid-Winter Meeting, IP Practice in Japan Committee, La Quinta, California, February 1, 2006
  • Recent Developments at the Federal Circuit, speaker, joint meeting with Japanese Patent Attorney Association (JPAA) and American Intellectual Property Law Association, Japan Practice Committee, Tokyo, Japan, April, 2005
  • Protection of Intellectual Property in the U.S., lecturer, Keio University, Fujisawa, Japan, April, 2005
  • Recent Developments at the Federal Circuit, American Intellectual Property Law Association, Mid-Winter Meeting, Japan Practice Committee, Orlando, Florida, January, 2005
  • Prior Art Submission Obligations in the U.S., presenter, Japanese Intellectual Property Association (JIPA), Japan, April, 2004
  • The Duty to Disclose in the U.S., presenter, Japanese Patent Attorney Association (JPAA) and Japanese Patent Office (JPO), Japan, April, 2004
  • Submission of Prior Art During Critical Prosecution Stages in the U.S., presenter, Japanese Patent Office (JPO), Japan, April, 2004
  • Recent Patent Law Cases at the Federal Circuit, presenter, Japanese Patent Attorney Association (JPAA) and Tokyo High Court, Japan, April, 2004
  • Argument-based Estoppel, speaker, American Intellectual Property Law Association, Japan Practice Committee Meeting, January, 2004
  • Recent Developments in U.S. Patent Law, speaker, American Intellectual Property Law Association, Japan Practice Committee Meeting, Washington, D.C., October, 2003
  • U.S. vs. European Patent Prosecution Practice of Mechanical and Electro-mechanical Inventions, 3rd International Conference on Law and Technology, Cambridge, MA, November 6-7, 2002
  • Patentability of Computer Programs in the U.S. and the World, International Legal Strategy Magazine, November, 2001
  • Foreign Inventor Inequitable Conduct, Sughrue Mion Intellectual Property Newsletter, May, 2000

Memberships and Affiliations

  • Boston Bar Association
  • Boston Patent Law Association
  • American Intellectual Property Law Association
  • AIPLA Japan Practice Committee
  • AIPLA European Practice Committee

Languages

  • Japanese

Education

Santa Clara University, J.D.

University of Southern California, M.S., Mechanical Engineering (Control Systems)

Massachusetts Institute of Technology, B.S., Mechanical Engineering

Previous Experience

  • Womble Bond Dickinson

Areas of Practice

Admissions

  • Massachusetts
  • District of Columbia (inactive)
  • Pennsylvania (retired)
  • U.S. Patent and Trademark Office

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