Jonathan Roberts helps inventors, managers, entrepreneurs, and C-suite executives throughout the U.S., Europe, and Asia obtain, understand, and make informed business decisions about their intellectual property assets.
Jonathan Roberts, a Nixon Vanderhye Shareholder, has more than a decade of experience in securing and defending patent rights for clients around the world. He regularly prepares and prosecutes utility and design patent applications and argues cases before the USPTO’s Patent Trial and Appeal Board (PTAB). Jonathan provides IP due diligence and client counseling services; and assists with patent litigation and post-grant proceedings including IPRs and reexaminations. Well-versed in AI, blockchain, FinTech, and video game technologies, Jonathan regularly drafts and prosecutes patent applications and provides client counseling in these dynamic areas.
Especially proficient in helping clients take advantage of IP opportunities in the software, electrical, electromechanical, design, and business methods arenas, Jonathan enjoys working with organizations of all sizes and levels of sophistication, from multinational industry giants and large universities to small startups and individual inventors. He has forged close relationships with clients and partners in the U.S. and abroad, and he frequently collaborates with law firms, patent attorneys, and inventors in the UK, Germany, India, and Japan.
Using a holistic approach that draws on his interdisciplinary educational background, industry experience, and knowledge of USPTO procedures, Jonathan turns insights into actions that benefit his clients. His familiarity with USPTO procedures, coupled with his ability to leverage data analytics and spot trends, are particularly valuable in delivering efficiency and economy in his patent prosecution and counseling work. His firsthand knowledge of what it takes to obtain a valid and enforceable patent is evidenced by a track record that includes dozens of patents that he has prepared and prosecuted being asserted in litigation, used in cross-licensing negotiations, and forming the basis of patent portfolio sales.
Jonathan has mastered the technique of using language – from tech-speak to plain English – that is most appropriate for his audiences. He prides himself in his ability to move seamlessly from highly technical conversations with inventors and engineers to practical, business-focused interactions with executives, to straightforward presentations that resonate with judges and juries. Jonathan specifically views the process of drafting patent applications, crafting written responses, and conducting examiner interviews as opportunities to “have a conversation.” In addition to his focus on creativity, clarity, and concision, he credits his success to knowing when to give and when to push back.
Before joining Nixon Vanderhye, Jonathan was the president of a small technology consulting firm where he developed software solutions that tracked uranium enrichment and fuel cycles and provided cost accounting services for nuclear power plants across the U.S. and in several countries abroad. While a computer science undergrad at the University of Maryland, he built custom service-oriented architecture and software system solutions for the air traffic management division of a global security and aerospace corporation. He also was instrumental in establishing a relationship between the university and the Montgomery County (Maryland) Police Department, which resulted in the development of web-based solutions for inventory tracking and management throughout the police force. Jonathan’s experiences in industry continue to inform his day-to-day practice.
- Represents a major video game company in patent prosecution portfolio strategy and development.
- Handles patent prosecution for a leading software company, including strategies related to its complex AI, cloud computing, blockchain, and other software technologies.
- Developed and implemented a strategic plan for a major software company to engage and integrate 800+ inventors at its R&D facilities in India with its European and American operations.
- Assists a major telecommunications company with its U.S. patent prosecution work, post-grant patent challenges, pre-litigation diligence and litigation strategy, and cross-licensing negotiations.
- U.S. Patent and Trademark Office
- U.S. District Court for the Eastern District of Virginia
- Virginia Supreme Court
- J.D., American University, Washington College of Law , 2007
- Master of Public Policy, University of Maryland, 2004
- B.S., Computer Science in B.A., Government and Politics, University of Maryland, 2003