Michael W. O’Neill is a partner and member of the firm’s Post-Grant Law/Patent Reexamination practice group.
Mr. O’Neill is currently involved in numerous litigation driven reexamination proceedings for both the Patent Owner and Third Party Requester (Challenger). Mr. O’Neill closely works with both in-house counsel, outside litigation counsel, and expert witnesses to develop effective strategies relating to complex high value patents involved within reexamination proceedings.
Before joining the firm, Mr. O’Neill worked for the United States Patent and Trademark Office. His experience at the USPTO includes serving as an Administrative Patent Judge for the Board of Patent Appeals and Interferences, a Reexamination Primary Patent Examiner for the Central Reexamination Unit (CRU), and a Primary Patent Examiner, Electrical Engineer. As a Patent Judge, Mr. O’Neill authored over 300 reported opinions and developed a strong background in ex parte appeals involving biomedical, mechanical, electrical, and business method technologies. As a Reexamination Examiner, Mr. O’Neill performed the patent examining functions for both ex parte and inter partes reexamination proceedings in various complex and simple technologies and developed the examination procedures utilized by CRU at that time. As a Primary Patent Examiner, Mr. O’Neill’s legal and technological expertise involved the rapidly expanding and highly litigious areas of casino gaming and video game technologies and biomedical technologies. At the USPTO, Mr. O’Neill received recognition for exceptional performance and productivity, including the Bronze Medal Award.
In addition, Mr. O’Neill was in private practice where he focused on the preparation and solicitation of patent applications, the drafting of licensing agreements pertaining to intellectual property rights, opinion letters, non-disclosure agreements, work-for hire agreements, the assignment of intellectual property rights, and employment agreements with ownership issues regarding intellectual property generated during the terms of employment, in addition to the preparation and solicitation of patent applications.
Mr. O’Neill also has experience as a systems analyst for the original 24 Global Positioning Satellite constellation, an energetic materials research machinist for the Naval Surface Warfare Center, and a tool and die maker and meteorologist for a firearms manufacturer.
Mr. O’Neill has served as a pro bono mediator for Virginia’s General
District Court.
Practice Areas
Admissions
- United States Patent & Trademark Office
- Virginia
Education
- Catholic University of America, J.D.
- University of Maryland at College Park, B.S. Aerospace Engineering
- Northern Virginia Mediation Service at the Institute for Conflict Analysis & Resolution, George Mason University, Certifications in Mediation; Commercial Mediation, Federal Workplace Mediation, Workplace Mediation & Conflict Resolution, and Family Mediation
Professional Affiliations
- American Intellectual Property Law Association