Overview

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.

FOCUS AREAS

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.

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.

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.

Education

  • Rutgers School of Law - Newark (J.D.)
  • Stanford University (M.S.)
  • Cornell University (B.S., cum laude)
    • Participant, Cornell Cooperative Engineering Program

Professional Activities

American Intellectual Property Law Association

New York Intellectual Property Law Association

Institute of Electrical and Electronics Engineers

American Society of Mechanical Engineers

New Jersey State Bar Association

New York State Bar Association

Civic / Charitable Activities

Member, Colts Neck Lions Club

Professional Admissions

  • State of New Jersey
  • State of New York
  • United States District Court for the District of New Jersey
  • United States District Court for the Eastern District of Texas
  • United States Patent and Trademark Office (Reg. No. 44,528)
  • Supreme Court of the United States

Judicial Clerkship(s)

Judicial intern to the Honorable Philip B. Cummis, Law Division, Special Civil Part, Essex County Superior Court, 1994

Publications & Features