Alan M. Kagen
Clients credit Alan Kagen’s skill, perseverance and ability for securing essential patents that changed the course of their companies.
Alan Kagen, a Nixon Vanderhye Shareholder, brings more than 25 years of hands-on patent prosecution experience to his practice. He works with individuals as well as public and private companies of all sizes and has particular depth in representing original equipment manufacturers of complex mechanical products and machinery.
Applying his thorough knowledge of his clients’ businesses and industries, as well as their specific objectives, Alan guides all aspects of the pre-grant process – from facilitating company-wide patent strategies to writing and filing patent applications in the U.S. He has successfully argued before the USPTO’s Patent Trial and Appeal Board. In addition, he has extensive relationships with foreign associates and assists in prosecuting patents around the world.
Alan also delivers intellectual property due diligence counsel to clients considering a potential sale or purchase of a business or portfolio. In these instances, he provides opinions on the merits of a portfolio and its value. In addition, he helps clients monetize their IP assets by facilitating connections between companies and manufacturers.
A former Patent Examiner at the U.S Patent & Trademark Office, Alan intimately understands the application process and procedures, as well as examiners’ requirements and expectations. Using this knowledge, he writes his clients’ applications in a manner that covers critical elements in detail while avoiding potential objections. Alan’s clients also benefit from his ability to efficiently comprehend complex technologies and identify unique aspects that support an invention’s patentability.
Alan frequently collaborates with Nixon Vanderhye patent litigators working to defend or assert a client’s patents. He writes opinions on infringement and validity of specific patents that are instrumental in guiding pre-litigation strategies.
During his undergrad years at Tulane University, Alan worked with engineers at the Consumer Product Safety Commission.
- Prepares and manages a worldwide portfolio of patent applications for a global industrial equipment manufacturer related to construction vehicles, including aerial work platforms, telehandlers, and complementary technologies.
- Prepares and manages a global portfolio of patent applications for one of the world’s leading industrial and agricultural irrigation companies.
- Represents a leading supplier of marine and recreational vehicle components in the preparation and management of patent applications.
- Counsels numerous clients on strategic approaches to leverage their portfolios and generate licensing revenue.
- Post-Grant Proceedings
- Due Diligence
- Domestic and Worldwide Portfolio Management
- PTAB Practice
IP Transactions, Agreements, and Trade Secrets
- Licensing, Sales, and Assignments
- Non-Disclosure Agreements
- Co-Existence/Consent Agreements
- Due Diligence
- IP Audits
Industrial & Manufacturing Systems & Products
- Marine Products
- Toys & Gaming
Electrical & Computer Technology
- Computer Systems (Hardware, Software, & Firmware)
- Advertising & Marketing
- Agriculture & Irrigation
- Building Products
- Food & Beverages
- Healthcare/Medical Devices
- Transportation & Logistics
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the 4th Circuit
- U.S. Court of Appeals for the 11th Circuit
- U.S. Patent and Trademark Office
- U.S. District Court for the Eastern District of Virginia
- U.S. District Court for the Southern District of Georgia
J.D., University of Baltimore School of Law, 1993
Comment and Notes Editor, Intellectual Property Law Journal
- B.S.M.E., Tulane University, 1989
- Martindale-Hubbell, AV Preeminent rating
- The Legal 500, patent prosecution (2013)