R. Neil Sudol

R. Neil Sudol has been in patent practice for over 23 years, with a technology emphasis in electronics, semiconductors, telecommunications, optics, mechanical devices including exercise equipment and systems engineering, and, more recently, medical devices, methods and instrumentation, business methods and software including telecommunications software and Internet software. Legal emphasis has included the preparation and prosecution of patent applications, including representing applicants before the Board of Patent Appeals and Interferences in the U.S. Patent and Trademark Office, the negotiation of technology transfer agreements and licenses, patent portfolio evaluation, and the structuring of patent and technology portfolios for start-up companies and mergers.

Education: Mr. Sudol graduated from Lehigh University in 1975 with a B.S. in engineering physics (magna cum laude) and a B.A. in applied mathematics and experimental psychology (magna cum laude). Mr. Sudol graduated from New York University School of Law in 1983.

Legal/Technical Experience: Mr. Sudol was with the firm of Karl F. Ross, New York, New York from 1977 to 1982 where he prepared patent applications primarily from foreign language disclosures in the electrical and mechanical areas, particularly including digital filters, multi processor configurations, microprocessor controlled servo mechanisms, hard wired video games, extruders and dies/molds, hydraulic circuits and devices, and planetary gearing systems.

Mr. Sudol was associated with the firm of Kenyon & Kenyon, New York, New York from 1982 through 1987. At Kenyon & Kenyon, Mr. Sudol handled patent prosecution and opinion related work, and collaborated with other attorneys in handling patent, trademark and copyright litigation. During this time, Mr. Sudol worked in the technical areas of nuclear fuel rod removal assemblies, semiconductors, telecommunications, robotics, numerically controlled cutting and plotting machines, thermal cautery probes and associated energization electronics, computer aided tomography installations, disc diffusion and autoassay methods for determining drug concentration parameters, and surgical instruments including skin staplers.

From 1988 through the present, Mr. Sudol has been a partner practicing intellectual property law, including a period during which he was a partner at McAulay Fisher Nissen Goldberg & Kiel, LLP (1996-97). During that time, he has prosecuted patent applications and provided opinion work in the technical areas of electronics, telecommunications, software, including telecommunications and internet software and business methods, computerized exercise equipment, orthodontic appliances, computerized dentistry, fiber optic and video endoscopes and associated instrumentation, laparoscopic and intravascular instruments, ultrasound scanners, ultrasonic cavitation devices, radiation-mediated diagnostic apparatus, intravascular and cardiac treatment methods, drug delivery systems, stents, intrapericardial balloon devices, computer assisted and robot implemented surgery, incisionless surgery, and computer assisted diagnostic techniques.

Since 1988, Mr. Sudol's work has included evaluating and enhancing patent and technology portfolios, conducting due diligence investigations on technology and patent related matters in corporate acquisitions, structuring patent and technology portfolios for start-up companies and mergers, and negotiating technology transfer agreements including patent assignments and/or technology licenses. His work has further included generating and implementing interactive intellectual property protection programs including various combinations of confidentiality and non-disclosure contracts, trade secret maintenance procedures, trademark and trade dress usage, and patent protection. Mr. Sudol has been counsel in several interference proceedings in the U.S. Patent and Trademark Office. He has drafted numerous trademark applications and handled trademark prosecution, and infringement litigation

Related Legal Experience: Mr. Sudol is admitted to practice before the United States Patent and Trademark Office, the United States District Courts of the District of New Jersey, the Southern District of New York and the Eastern District of New York, and before the Appellate Courts of the States of New York and New Jersey.

Bar Association and Professional Memberships: Mr. Sudol is a member of the American Intellectual Property Law Association and the New York Intellectual Property Law Association.