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

IP and Standardization for Emerging FinTech

November 30, 2023 9:35 AM - 10:05 AM PST

Speaking Engagement

The Metaverse: Transforming the Patent Landscape

London, England, 116 Pall Mall, April 19, 2023 12:05 PM - 1:05 PM PST

Speaking Engagement

Artificial Intelligence is Becoming Ubiquitous: Impacts & Issues

Washington, DC, July 14, 2022 2:30 PM - 3:15 PM PST

Speaking Engagement

Industry Review 2021: Software and AI

Virtual, December 14, 2021 9:00 AM - 10:15 AM PST

Webinar

Global IP Forum: Driving IP Value – From Boardroom to Court Room

Virtual, November 22, 2021 11:00 AM - 2:00 PM PST

Speaking Engagement

Industry Review 2020: Software & AI

Virtual, December 7, 2020 11:00 AM - 12:45 PM PST

Speaking Engagement

Responding to the AI Revolution: How is the Legal Practice Evolving?

Virtual, October 7, 2020 11:45 AM - 12:45 PM PST

Speaking Engagement

Software IP 2019

San Jose, CA, Hyatt Place San Jose - Downtown, October 2, 2019 9:45 AM - 11:00 AM PST

Speaking Engagement

2019 IEEE Global Blockchain Summit

Gaithersburg, MD, NIST Gaithersburg Campus, September 18, 2019 11:30 AM - 12:15 PM PST

Speaking Engagement

56th Annual Conference on Intellectual Property Law

Plano, TX, The Center for American and International Law, November 12, 2018

Speaking Engagement

Israel Global IP Strategy Forum

Herzliya, Israel, Dan Accadia Herzliya Hotel, 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

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