Mr. Bean has extensive experience counseling clients on evaluating, acquiring, and protecting intellectual property assets. He focuses his practice on patent matters, including domestic and foreign patent prosecution in the areas of communications, consumer electronics, consumer products, semiconductor and materials technologies, medical devices, casino and consumer gaming, software and network-based systems, and computer-implemented business methods. Mr. Bean’s patent practice is also directed to patent and technology licensing, IP due diligence, product clearance and patent opinions, and patent post-grant procedures.
Before joining Gibbons, Mr. Bean was Senior Counsel at Darby & Darby P.C. in New York. Mr. Bean also held positions as an associate at Katten Muchin Rosenman in New York and as Corporate Counsel at Lucent Technologies Inc. and Avaya Inc. in Holmdel, New Jersey. At Avaya, Mr. Bean was responsible for setting up and administering the company’s patent prosecution practices, including the selection and deployment of docketing and related information management systems and the management of outside counsel, foreign associates, and patent annuity vendor services.
IP Harvesting, Evaluation, and Strategy
IP Due Diligence and Agreements
Developing effective client strategies for creating and monetizing IP assets, including strategies relating to managing and monetizing existing patent portfolios and to incentivizing, identifying, and protecting new IP assets.
IP Opinions and Counseling
Identifying the scope, strength, and value of IP assets under client consideration for purchase, sale, or licensing; addressing validity, enforceability, encumbrances, and other attendant risks; and assisting in the preparation of associated purchase, sale, and licensing agreements with a focus on mitigating risk.
Preparing qualified opinions of counsel for clients, including freedom to operate opinions for products/services, as well as patent infringement/non-infringement opinions and patent validity/invalidity opinions; clearing product/service design alternatives; and evaluating and preparing patent litigation contentions with regard to infringement/non-infringement opinions and validity/invalidity.
Patent Post-Grant Procedures
Developing effective patent prosecution strategies according to clients’ business objectives; preparing and prosecuting patent applications in the U.S. Patent & Trademark Office and in foreign patent offices in accordance with clients’ patent prosecution strategies.
Counseling clients in the application of post-grant procedures in the U.S. Patent & Trademark Office, including inter partes reviews, post-grant reviews, reviews conducted under the transitional program for covered business methods, ex parte reexaminations, and supplemental examinations.