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, The Westin Washington, D.C. City Center, April 20, 2024 10:00 AM - 11:00 AM EDT

Industry Event

10th Annual BPIP Conference

Tel Aviv, Israel, Sheraton Hotel Tel, Aviv, April 8, 2024 9:00 AM - 5:15 PM EDT

Speaking Engagement

IP and Standardization for Emerging FinTech

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

Speaking Engagement

The Metaverse: Transforming the Patent Landscape

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

Speaking Engagement

Artificial Intelligence is Becoming Ubiquitous: Impacts & Issues

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

Speaking Engagement

Industry Review 2021: Software and AI

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


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

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

Speaking Engagement

Industry Review 2020: Software & AI

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

Speaking Engagement

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

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

Speaking Engagement

Software IP 2019

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

Speaking Engagement

2019 IEEE Global Blockchain Summit

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

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

Related News & Insights

From Joseph E. Mutschelknaus

In the News

February 21, 2023

Supreme Court in UK Set to Weigh IP Rights for AI

EE Times

Press Release

May 1, 2022

Super Lawyers Recognizes 14 Attorneys as 2022 “Super Lawyers” and “Rising Stars”

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In the News

March 31, 2022

EU Unified Patent Court Spurs Delight and Fear for Experts


In the News

January 28, 2022

PTAB Clears Nasdaq To Seek Director Review of Axed IP


Webinar Recordings & Materials

December 9, 2020

IAM Industry Review 2020

Bylined Articles

July 23, 2020

Top Five Data Privacy Issues that Artificial Intelligence and Machine Learning Startups Need to Know

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Client Alert

July 7, 2020

IP Hot Topic: Patent Prosecution Tool Kit

Carla Ji-Eun Kim


July 7, 2020

Patent Prosecution Tool Kit

Sterne, Kessler, Goldstein & Fox Multiple Authors

Bylined Articles

July 7, 2020

Fast Track Patent Examination

Sterne, Kessler, Goldstein & Fox Joseph E. Mutschelknaus, Peter A. Jackman

In the News

October 23, 2019

Mixed Bag At PTAB For Light Bulb Co. Challenging LED Patent


Bylined Articles

November 21, 2018

A Smart Approach to Patenting an Intelligent System

Technica Curiosa Joseph E. Mutschelknaus

In the News

October 18, 2018

Microsoft's Open-Source Move To Pay Dividends In The Cloud



July 9, 2018

Israel Global IP Strategy Forum - Presentations

PTAB Strategies and Insights

April 18, 2018

PTAB Strategies and Insights - April 2018

Multiple Authors

Bylined Articles

April 18, 2018

An Early Obituary for CBM Review

Sterne, Kessler, Goldstein & Fox Joseph E. Mutschelknaus

In the News

March 16, 2017

Versata Patent Targeted By Ford Ineligible For CBM Review


Books and Chapters

February 17, 2017

Patent Office Litigation - Second Edition 2017

Thomson Reuters Westlaw Multiple Authors

In the News

November 21, 2016

BREAKING: Fed. Circ. Reins In PTAB On Reach Of CBM Reviews


In the News

November 15, 2016

Fed. Circ. Affirms Google PTAB Win On Unwired Planet Patent


In the News

June 7, 2016

Fed. Circ. Probes Limits Of Business Method Patent Review


In the News

February 12, 2016

Sterne Kessler Shares the Love for Valentine's Day


In the News

January 1, 2016

Sterne Kessler Directors Featured in Washington Business Journal’s "People on the Move"

Washington Business Journal & Patent, Trademark & Copyright Journal