Related services and key industries
Nate Rees joined the Dallas office in 2007 and focuses his practice on intellectual property matters. He has experience in obtaining and enforcing patents in the areas of telecommunications, electronics, computer hardware and software, FinTech solutions, blockchain systems, biomedical devices, computer networking and a variety of mechanical arts.
Nate is registered to practice in front of the US Patent and Trademark Office. Nate has advised both large-scale and small-scale clients in building patent portfolios to provide value to their companies, as well as to accomplish their defensive and offensive goals. His patent prosecution experience includes drafting patent applications and managing patent prosecution for cases in the U.S. Patent Office as well as coordinating foreign patent office strategy. Nate's intellectual property experience also includes assisting clients with licensing their technology, in handling freedom-to-operate tasks, and with due diligence reviews related to intellectual property in acquisition and sales settings.
Nate is extensively involved in both invalidating and defending patents which have been drawn into post issuance USPTO proceedings. This experience has included arguing inter partes review cases in front of the Patent Trial and Appeal Board, and with handling appeals before the Federal Circuit. As many of these cases have been involved in litigation while the USPTO proceeding is pending, Nate has crafted and executed strategies which address various issues that arise from having these cases in parallel.
Prior to attending law school, Nate worked at an engineering firm and conducted masters research, where he primarily focused his attention on the development and improvement of various medical imaging devices. Representative devices include CT, MRI, ultrasound, SQUID's (magnetoencephalography) and novel handheld RF imaging devices. During this time, Nate gained practical experience working within the many facets of the electrical arts including electromagnetic propagation, signal processing, digital/analog circuit design, antenna design and control system design.
JD, cum laude, Franklin Pierce Law Center, 2007
ME, Electrical Engineering, University of Utah, 2004
BS, Electrical Engineering, University of Utah, 2003
- Texas State Bar
- US Patent & Trademark Attorney
- Preparing and prosecuting domestic and international patents in the radio frequency, telephony, micro-electronics, electronic commerce, computer, blockchain, medical device, chemical, manufacturing, restaurant equipment, publishing, automotive, public transportation, ordinance, optics, hydrocarbon production and cryptographic arts
- Conducting both ex parte and inter partes post issuance proceedings in the USPTO for highly contested patents covering fundamental communications technology and highly commercially successful technologies
- Managing intellectual property due diligence projects in association with acquisition of a business division from a major technology company, merger of telecommunications companies and acquisition of medical device portfolios
- Drafting and negotiating technology licenses, joint development licenses, requirements documents, technology transfer agreements, and outsourcing agreements in the fields of communications, electronic commerce, software development, manufacturing and medical devices
- Establishing internal IP development systems for clients and advising on the establishment of employee programs to incentivize the disclosure and development of IP
- Texas Rising Star, intellectual property, Thomson Reuters, 2015-2019
- Co-Author "Special Issue - 2013 SBOT Annual Meeting CLE Report," State Bar of Texas IP Section Newsletter, June 2013
- Co Author, "Reexaminations – Fertile Ground in the Changing Landscape of Patent Law," The International Law Firm of Fulbright & Jaworski - Intellectual Property, August 2009
- "The Blochchain Impact on Tech Transfer: An Introduction and Why it Matters," AUTM Central Meeting, July 28, 2019
- "Introduction to Blockchain Technology and Potential Legal issues," Hon. Jundge Lynn Inn of Court, November 7, 2018
- "Overview of the New Post Issuance Proceedings," State Bar of Texas IP Section Advanced CLE, Dallas, Texas, March 19, 2014
- "Tips and Strategies for Conducting Post Issuance Proceedings in Front of the USPTO," Association of Corporate Counsel meeting, Houston, Texas, September 24, 2013
- State Bar of Texas - Intellectual Property Section
- Council Member 2014-2016
- Current Member and past Chair of the Patent Legislation and USPTO Practice Committee 2012-2013
- Dallas Bar Association - Intellectual Property Section