Overview

Ian Soule is a director in Sterne Kessler’s Mechanical & Design Practice Group. His work includes the strategic preparation and prosecution of high-value patent applications for various mechanical, electromechanical, software-based, and biomedical technologies for a variety of clients. His current area of focus is in managing complex global portfolios in need of development to get them ready for monetization efforts—while PTAB-proofing the issuing claims. His experience on both sides of enforcement/PTAB actions brings a unique and valued perspective to both global prosecution strategy development and client counselling as a burgeoning trusted business advisor.

Ian is actively involved in Patent Office Litigation, currently serving as back-up counsel in several inter partes reviews having parallel district court litigation. He is also actively involved in due diligence activities along with strategic opinion drafting on patentability, freedom-to-operate, validity, and infringement.

Ian is a PTAB Legal Experience and Advancement Program (LEAP) participant. The program provides associates with training and development opportunities in PTAB proceedings, including oral argument.

Ian is also a contributing author of Patent Office Litigation, Second Edition, published in 2017 by Thomson Reuters Westlaw. The book provides a fresh and comprehensive exploration of patent office litigation proceedings, including how the proceedings interact with other aspects of patent procurement and enforcement, while delivering practical analysis and advice.

Prior to joining Sterne Kessler, Ian worked at the USPTO for close to four years, examining U.S. and Chapter II PCT patent applications related to heat exchange and thermal control systems. Other areas of his concentration at the PTO included nuclear cooling towers, electronic heat pipe and sink design, vehicular HVAC and powertrain cooling, automatic HVAC control systems, process control, LNG production and cryogenics.

As lead classifier for his Art Unit, Ian implemented and managed a revised process that significantly reduced pending un-docketed cases by more than one third. He also served as a quality nominee for the transition from the USPC classification system to CPC. Additionally, Ian assisted in training new examiners in prior art searching and examining, and served as a negotiation authority for junior examiners during interviews.

Prior to joining the USPTO, Ian was an engineer at Lexmark International, where he coordinated technical and business checkpoints for products from the quoting stage, design freeze, tooling kick-off and approval, through start-of-production. His experience at Lexmark was internationally focused, where he coordinated and advised on design changes after SOP with teams in the Philippines and southern China.

During his undergraduate years, Ian studied acoustics and noise control, as well as vibrations and modal analysis. As part of a Capstone team, he designed noise abatement alternatives for a large industrial shot-blast machine. He also led a team that evaluated the school emergency notification system and performed modal analysis on a student enterprise snowboard design. In his spare time, Ian served as McNair League Head for the Michigan Tech Broomball League, where he developed an affinity for the “other” Blue Book, the colloquial term for the Broomball Rules and Regulations.

While in school, he worked at DENSO International America in an automotive test engineering and quality engineering co-op, serving as primary test engineer during a manufacturing plant correlation study. There, he performed application and development testing on both vehicle and bench systems, and proposed design changes and decisions to engineers and OEMs.

Ian received his J.D. from The George Washington University Law School, with honors, and his B.S., magna cum laude, in mechanical engineering from Michigan Technological University.

Accolades

  • Thurgood Marshall Scholar
  • American Intellectual Property Law Association, Quarterly Journal – Editorial Staff Member (July 2014 – May 2016)

Education

  • J.D., The George Washington University Law School, with honors
  • B.S., Mechanical Engineering, Michigan Technological University, magna cum laude

Admissions

  • District of Columbia
  • Michigan
  • United States Patent & Trademark Office

Events

Speaking Engagement 2023 National Patent Application Drafting Competition National Finals Alexandria, VA, April 14, 2023
Webinar LEAP Anniversary Event Virtual, May 18, 2021

Related News & Insights From Ian Soule

Press Release Sterne Kessler Elects Record-High Seven Directors in 2023 Sterne, Kessler, Goldstein & Fox January 4, 2023
Firm Announcements Sterne Kessler and D.C. Bar Pro Bono Center Host Sixth Annual Small Business Clinic Sterne, Kessler, Goldstein & Fox June 9, 2022
In the News Patent Tribunal Judges Urge Firms to Send Women, Diverse Lawyers Bloomberg Law April 28, 2022
In the News Skilled in the Art With Scott Graham Law.com April 1, 2022