Joseph E. Mutschelknaus Joe has extensive experience at the US Patent and Trademark Office, both prosecuting patents and litigating disputes before the Patent Trial and Appeal Board.

Joseph E. Mutschelknaus

+1 202.772.8874


Joseph E. Mutschelknaus is a director in Sterne Kessler’s Electronics Practice Group where he prosecutes post-issuance proceedings and patent applications before the United States Patent & Trademark Office. He also assists with district court litigation and licensing issues.

Joe has extensive experience before the Patent Trial and Appeal Board (PTAB), challenging and defending already-issued patents. In particular, he handles post-grant review, inter partes review, and covered business method review proceedings under the America Invents Act, representing both petitioners and patent owners. In addition, he has handled reexamination proceedings, winning several high-stakes appeals before the PTAB. To win these cases, Joe brings his ability to clearly explain the relevant technology in a way that is most favorable to his clients.

Also, Joe has prepared and prosecuted hundreds of patent applications. His approach to patent application drafting is technology-focused, working with inventors to identify specific metes-and-bounds of the subject matter sought to be patented. This approach draws from his experience litigating patentability before the PTAB, where ambiguity in a patent’s scope is often held against the patentee.

During prosecution, Joe has particular expertise using new expedited procedures, such as the Patent Prosecution Highway and the USPTO’s Track I program. With these procedures, he has helped both small start-ups and large multinational companies build large, multifaceted patent portfolios quickly that can be licensed or enforced internationally. In developing a patent prosecution strategy, Joe believes in focusing efforts efficiently to maximize return on investment.

Joe regularly writes and publishes on cutting-edge patent law issues. For example, he published a scholarly note on the scope and applicability of implied patent licenses to open source software products (19 Fed. Cir. B.J. 409). Additionally, he 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. He is also an adjunct professor at the George Mason University Antonin Scalia Law School.

Joe’s areas of technical expertise include object oriented software design, web technologies, data security, graphics, imagery, panoramic photography, 3D printing, geographic information systems, networks, and Internet engineering. Prior to joining Sterne Kessler, he worked in industry, providing software engineering and consulting services.

Joe received his J.D. from The George Washington University Law School, with honors. He earned his B.S. in computer engineering from the University of Virginia, with distinction.


  • Super Lawyers, “Rising Star – Washington, DC” (2022 – 2021)


  • J.D., The George Washington University Law School, with honors
  • B.S., Computer Engineering, University of Virginia, with distinction


  • District of Columbia
  • Supreme Court of Virginia
  • U.S. Court of Appeals for the Federal Circuit
  • United States Patent & Trademark Office


Speaking Engagement 9th Annual IABA National Conference Washington, DC, April 20, 2024
Industry Event 10th Annual BPIP Conference Tel Aviv, Israel, April 8, 2024
Speaking Engagement IP and Standardization for Emerging FinTech November 30, 2023
Speaking Engagement The Metaverse: Transforming the Patent Landscape London, England, April 19, 2023
Speaking Engagement Artificial Intelligence is Becoming Ubiquitous: Impacts & Issues Washington, DC, July 14, 2022
Speaking Engagement Industry Review 2021: Software and AI Virtual, December 14, 2021
Speaking Engagement Industry Review 2020: Software & AI Virtual, December 7, 2020
Speaking Engagement Responding to the AI Revolution: How is the Legal Practice Evolving? Virtual, October 7, 2020
Speaking Engagement Software IP 2019 San Jose, CA, October 2, 2019
Speaking Engagement 2019 IEEE Global Blockchain Summit Gaithersburg, MD, September 18, 2019
Speaking Engagement 56th Annual Conference on Intellectual Property Law Plano, TX, November 12, 2018
Speaking Engagement Israel Global IP Strategy Forum Herzliya, Israel, July 9, 2018
Speaking Engagement MIP PTAB Forum 2018 - West Palo Alto, CA, May 8, 2018
Speaking Engagement Israel Global Patent Litigation Forum Tel Aviv, June 26, 2017
Speaking Engagement IP Software Summit 2017 San Francisco, CA, May 18, 2017

Related News & Insights From Joseph E. Mutschelknaus

In the News Supreme Court in UK Set to Weigh IP Rights for AI EE Times February 21, 2023
Press Release Super Lawyers Recognizes 14 Attorneys as 2022 “Super Lawyers” and “Rising Stars” Sterne, Kessler, Goldstein & Fox May 1, 2022
In the News PTAB Clears Nasdaq To Seek Director Review of Axed IP Law360 January 28, 2022
In the News BREAKING: Fed. Circ. Reins In PTAB On Reach Of CBM Reviews Law360 November 21, 2016
In the News Sterne Kessler Shares the Love for Valentine's Day Bisnow February 12, 2016
In the News Sterne Kessler Directors Featured in Washington Business Journal’s "People on the Move" Washington Business Journal & Patent, Trademark & Copyright Journal January 1, 2016