The inventor should carefully consider every word of the claims. First, an entire working invention must be recited in the main claim. Second, there must be some wording in which the claim distinguishes it from the prior art. Third, the inventor should consider removing or broadening any wording which is not necessary to overcoming the previous work, so that the claim is not unduly narrow. If you have any questions about this, you need to consult with an experienced patent lawyer.
F. Donald Paris (Don) retired in 2002 from the Law Department of ExxonMobil Corporation, where he specialized in intellectual property law with emphasis on the protection of intellectual property (IP) vis a vis patents, copyrights, trademarks, and trade secrets, technology transfer through licensing and related agreements, and acquisition of technology through research and development agreements and licensing. Don counseled and supported clients in all aspects of intellectual property including protecting and managing intellectual and proprietary assets, establishing IP programs, filing and prosecuting U.S. and non-U.S. patent applications, drafting and negotiating worldwide agreements for licensing technology and patent rights and for research and development and joint venture projects, and license, guarantee, engineering, secrecy, consulting, and other agreements related to licensing and acquisition of proprietary technology. He also helped develop IP guidelines and policies for corporate management, and counseled clients in areas of U.S. Export Control and Foreign Corrupt Practice Act. Mr. Paris’ responsibilities were geographically diverse, including the United States, Canada, Central and South America, United Kingdom, Europe, Far East, Australia, India, Japan, South Korea, Philippines, Taiwan, Russia, and China.
Don received a Bachelor of Science in Electrical Engineering from New Jersey Institute of Technology (NJIT) in 1962 and a Juris Doctor from Georgetown University Law Center in 1966. He also attended Columbia University Parker School of International Law. At NJIT, he was a member of Eta Kappa Nu, the electrical engineering honor society, and was on the Dean’s List. Mr. Paris was a member of Phi Alpha Delta legal fraternity.
Before joining ExxonMobil, Mr. Paris was employed as a Patent Attorney with The Singer Company and was a Patent Examiner with the United States Patent Office from 1962 to 1966.
Mr. Paris is a Registered U.S. Patent Attorney. Professionally, he is a member of the State Bars of New York, New Jersey, and the District of Columbia. He also is a member of the Licensing Executives Society, and past member of the Intellectual Property Section of the American Bar Association and the New Jersey Intellectual Property Law Association.
Don was very active in community life when he resided in New Jersey for more than 35 years. He was a member, including President and Vice President, of the local and regional school boards of education for 18 years and on various township committees and boards, and an active participant and coach in youth programs. Mr. Paris was selected as Citizen of the Year by the local Clark B’nai B’rith Chapter and participated in Leadership New Jersey.
Don and his wife, Maxine, now reside in Delray Beach, Florida, and spend part of their time at Beach Haven, Long Beach Island, New Jersey. They have three sons, Drs. Scot, Jay and Brian and six grandchildren.
David W. Barman holds undergraduate degrees in Chemistry and Music from the University of North Carolina at Chapel Hill, B.S. 1990 and was a member of the inaugural class at the Florida International University College of Law in Miami Florida, JD., 2005. David earned Dean’s List honors at each of UNC and FIU. He is a member of the Florida Bar and is admitted to practice in Florida, U.S. Court of Appeals for the Federal Circuit, the Supreme Court of the United States, U.S. District Court for the Southern District of Florida, U.S. District Court for the Middle District of Florida, and the United States Patent and Trademark Office.
Mr. Barman’s scientific experience includes, medical, personal care chemistry, and pharmaceutical research. He has patented inventions in these and many other areas. Some of his current clients have patented mechanical, computer, medical, and sports related articles just to name a few. His clients also include Patent Attorneys who are in need of a patent professional in the prosecution of chemical and pharmaceutical patents.
David is not only a scientist, but an inventor as well. This rare combination of skills: scientist, inventor, and patent professional, allows Mr. Barman to assist numerous clients in many different fields.
David W. Barman is also professor at FIU in Miami where he teaches Business Law in the College of Business.
David is also an accomplished musician. He attended UNC Chapel Hill on a music scholarship, toured Europe with the Spirit of America Marching Band, and toured the United States as a member of the Garfield Cadets Drum and Bugle Corps.
Ralph E. Locher was born in Mount Pleasant, Pennsylvania, USA. He has lived in Florida since 1996 and makes his home in Cooper City together with his wife Shelly and their children Tonya, Kristie, and Nicholas. Mr. Locher received a Bachelor of Science Degree in Business Management from Northern Illinois University, 1983, B.S. degree in Electrical Engineering from Southern Illinois University – Carbondale in 1986, and a Juris Doctorate in Law from St. Louis University (cum laude 1994).
Mr. Locher is a member of the Florida Bar, the Illinois Bar, the Missouri Bar, and is registered to practice before the U.S. Patent and Trademark Office. Mr. Locher was one of Florida’s first board certified intellectual property law attorneys. Mr. Locher is a member of the American Bar Association, Section of Intellectual Property Law Association of Florida and has specialized in only intellectual property matters since 1996.
Mr. Locher specializes in patents, trademarks, patent interference, patent appeals, and international patent prosecution. Mr. Locher is conversational in German. His primary areas of expertise are in engineering, with an emphasis on discrete components, circuits, integrated circuits and semi-conductor devices; thermodynamic processes, including fluid flow, power plant processes, heat exchange, and energy conversion; exhaust gas purification (filtering, catalytic conversion); nuclear technology, coatings; electromagnetic devices (sensors, actuators, motors), digital and analog signal processing, communications (telecommunications apparatus and signal processing); computer engineering, including software, hardware, and process modeling; digital logic circuitry, digital/analog interfaces; high temperature superconductivity, optics systems; and automotive technology, including exhaust systems and exhaust gas purification, control systems, transmission and engine control, safety systems, automotive electronics; and business method patents.
Before venturing into patent law Mr. Locher was an aerospace engineer at Boeing/McDonnell Douglas Corporation for nine years where he worked on electronic systems for F-15 and F-18 fighter aircraft. In addition, Mr. Locher has two years general management experience with Pepsico Corporation, Pizza Hut division.
Werner H. Stemer grew up in the Montafon Valley in Vorarlberg, Austria. He has lived in Florida since 1984 and makes his home in Fort Lauderdale. Mr. Stemer holds degrees from the University of Innsbruck, Austria (M.A.), from Florida International University (B.S., physics), from Kennedy Western University (Ph.D.), and from Nova Southeastern University (J.D., magna cum laude).
Mr. Stemer has more than thirty years experience in patent law and he is board certified as an expert in intellectual property law (Florida Bar Board of Legal Specialization). His primary expertise lies in the prosecution of patents and trademarks, patent appeals, and international (PCT) patent applications. A substantial amount of his time is spent on patent reexaminations, clearance opinions, and infringement opinions. Mr. Stemer’s primary technical expertise lies in general and applied physics, in physical chemistry, mechanical and electrical engineering, computer engineering, and software applications.
Werner Stemer has published several articles and commentaries in English and in German, and he has lectured on a wide range of corresponding topics in Europe and in the United States. His publications include:
• Patentschutz in wichtigen Exportmärkten, Apfelthaler, et al.
(publ.), Facultas Verlag, Vienna, Austria 2008.
• Das Wirtschaftsrecht der USA für Unternehmensgründer,
Apfelthaler, Stemer, et al., Verlag Österreich, Vienna, Austria 2003.
• Not With a Bang, but a Whimper: The Long-Awaited Festo Decision
– Patent Café, http://www.patentcafe.com
• The Doctrine of Equivalents after Hilton Davis and Markman, and a Proposal for Further Clarification,
22 Nova L. Rev. 783 (1998).
• Protection of Intellectual Property through Patents, Trademarks, and Copyright, Dissertation,
Kennedy Western University Press (1997).
• U.S. Warenzeichen für österreichische Anmelder, Internatiale Wirtschaft
(published by the Austrian Chamber of Commerce.
Werner H. Stemer also holds the position of the Austrian Honorary Consul General, head of mission of the Austrian Consulate Miami. For information, please visit the website of the Austrian Consulate.
Laurence A. Greenberg has been the Managing Partner of the Lerner Greenberg Stemer LLP law firm since 1990. His professional efforts are mainly directed toward advising clients, educating colleagues and practicing in the areas of Intellectual Property prosecution, as well as litigation and dispute resolution.
Mr. Greenberg was born in Los Angeles, lived in New York for many years and relocated to Florida in 1981. He graduated from Brooklyn College in 1971 and, after several years in business, graduated from Pace University School of Law in 1981. He and his wife Leslie have lived in Hollywood, Florida for many years where they have raised their four children.
Mr. Greenberg was registered to practice before the United States Patent and Trademark Office as a Patent Agent in 1979 and as an Attorney in 1982. He was admitted to the Florida Bar in 1982 and to the United States Court of Appeals for the Federal Circuit (CAFC) in 1983. He is also a member of the American Bar Association and the New York and Florida Intellectual Property Law Associations.
Although Mr. Greenberg’s educational background is in Physics, he has had years of experience in the fields of Electrical, Mechanical and Chemical patent prosecution in general, and more specifically dealing with semi-conductor components, circuits, computer hardware and software, communications, automotive electronics and devices, power generation, environmental engineering including exhaust gas purification, printing, textile machinery, postage equipment, medical equipment, household appliances, optics, thermodynamics, electromechanical and electrochemical devices, material science as well as carbon, graphite and rubber products.
Mr. Greenberg has been a lecturer in the field of Intellectual Property Law, with particular emphasis on the Patent Cooperation Treaty and in explaining the nuances and changes in U.S. Patent and Trademark law and practice to attorneys, inventors and business people in the United States, and to Intellectual Property practitioners abroad. He has participated in numerous state and federal suits and appeals before government bodies and agencies as well as District Courts and the CAFC.
Mr. Greenberg is AV® Peer Review Rated and is Board Certified in Intellectual Property Law.
Mr. Greenberg is fluent in German and is involved in local politics, as well as charitable and community organizations.
