Paul J. Sutton
✉️ paul@smb.law
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📎 Paul’s CV
Paul J. Sutton, a registered patent attorney, enjoys over five decades of law firm and corporate experience concentrated in intellectual property law. Prior to obtaining his Juris Doctor degree, while an engineer at Douglas Aircraft’s Missiles & Space Systems Division, Paul was a member of the team that designed the Apollo Saturn third stage booster rocket structure which carried the first U.S. Astronauts to the Moon.
Paul served the Greenberg Traurig and Thelen Reid & Priest law firms as Chair of their Patent, Intellectual Property & Technology Practices, and he served Gulf + Western Corp. as its Patent Counsel. Paul has successfully counseled clients in developing global intellectual property business strategies for generating significant ongoing annual revenues. He is familiar with all aspects of patents, trademarks, copyrights, licensing, trade dress, trade secrets, unfair competition, false advertising, grey market, computers, the Internet, and anti-counterfeiting. Paul enjoys an unmatched track record in patent and trademark litigation, representing clients at the trial and appellate levels before federal and state courts, the U.S. International Trade Commission, administrative tribunals, and in various Alternative Dispute Resolution forums.
Paul serves as an Adjunct Professor at New York University’s Tandon School of Engineering, where he teaches courses in Intellectual Property Strategies for Engineers & Scientists and Intersections of Law, Engineering, Business and Psychology. He also serves as a member of the Industry Advisory Board of NYU:Tandon.
Paul is a member of the Editorial Panel of UK-based World Intellectual Property Review, for whom he regularly authors publications. As a guest of the Peoples Republic of China, he lectured before the judiciary and legislators to harmonize Chinese and U.S. intellectual property laws.
Admitted to Practice
U.S. Supreme Court
District of Columbia
New York State
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York
U.S. District Court for the Western District of New York
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of California
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the District of Columbia Circuit
U.S. Court of Appeals, Second Circuit
U.S. Patent and Trademark Office
Education
B.M.E., Mechanical and Electrical Engineering, New York University, 1962
Industrial Engineering, Columbia University
Welding Metallurgy, U.C.L.A.
Juris Doctor, Brooklyn Law School, 1967
Areas of Concentration
Global intellectual property counseling
Complex and high stakes intellectual property litigation
Intellectual property licensing
Technology transfers and joint ventures
Due diligence for mergers and acquisitions
Patent preparation and prosecution, including interferences
Trademark protection and brand enforcement
Copyright protection and enforcement
Trade dress and trade secrets
Intellectual property audits
Information technology strategies
Appellate practice before the U.S. Patent & Trademark Office, Patent Trial and Appeal Board, and the U.S. Court of Appeals for the Federal Circuit
Awards & Recognition
Highest AV Preeminent professional rating
Recognized as a Super Lawyer by Super Lawyers Magazine after extensive peer nominations, blue ribbon panel review and independent research.
Listed, Legal 500 US, an internationally recognized client referral guide providing in-depth editorial and recommendations of law firms and lawyers: recommended for Intellectual Property and Patent Litigation, International Trade Commission, and Life Sciences/Chemical.
Published
Patent Perils Pitfalls & Pointers
Co-author of textbook, "Commercial Law"
Author, “The Impact of Business Method Patents”, published by Oxford University Press, 2000
A Year of Significant Patent Law Change, published in World Intellectual Property Review Digest, 2008
Win Patent Disputes without Losing your Shirt, published by World Intellectual Property Review, 2008
Nanotechnology License Pitfalls, published by Oxford University Press, 2008
New Patent Licensing Strategies Required, published by Oxford University Press, 2008
Patent Unenforceability and Star Scientific’s Impact, published by World Intellectual Property Review, 2009
Are Your International IP Disclosures Illegal?, published by World Intellectual Property Review, 2009
Unsettled U.S. Law: Infringement of Product-By-Process Patents, published by World Intellectual Property Review, 2009
Clarity On Product-By-Process Patents, published by World Intellectual Property Review, 2009
Smartphone Patent Wars Escalate, published by World Intellectual Property Review, 2010
Business Method Patents Remain Alive After Bilski, published by World Intellectual Property Review, 2010
Judge Invalidates Human Gene Patents, published by World Intellectual Property Review, 2010
The Surge in Medical Patent Activity, published by World Intellectual Property Review, 2010
Contingency Fees in Patent Lawsuits, published by World Intellectual Property Review, 2010
Avoid False Patent Marking Pitfalls, published by World Intellectual Property Review, 2010
High-Tech Patent Wars: A New Front, published by World Intellectual Property Review, 2011
Patent Reform Means Far-Reaching Consequences for Inventors, published by World Intellectual Property Review, 2011
Proper patent inventorship, published by World Intellectual Property Review, 2011
Provisional patent applications, published by World Intellectual Property Review, 2011
The NDA: A Valuable IP Tool, published by World Intellectual Property Review, 2011
Avoid Patent Co-Ownership Pitfalls, published by World Intellectual Property Review, 2011
2010 Federal Circuit Patent Rulings, published by World Intellectual Property Review, 2011
Patent Prosecution Bars in Litigation, published by World Intellectual Property Review, 2012
2011 Federal Circuit Patent Rulings, published by World Intellectual Property Review, 2012
Are The Patent Trolls Getting Hungrier?, published by World Intellectual Property Review, 2012
Tech Patent Arms Race Escalates, published by World Intellectual Property Review, 2012
Will Apple Derail Kodak’s Patent Sale?, published by World Intellectual Property Review, 2012
Patent Trolling at the USITC, published by World Intellectual Property Review, 2012
AIA Patent Law Reform Is Effective, published by World Intellectual Property Review, 2012
Surprise Patent Setback Stuns Biotech, published by World Intellectual Property Review, 2012
Patent Joint Defence Agreements: Hidden Pitfalls, published by World Intellectual Property Review, 2013
Patent Declaratory Judgment Actions, published by World Intellectual Property Review, 2013
Future Pain For Patent NPEs, published by World Intellectual Property Review, 2013
Obama Administration Unsettles Patent Bar, published by World Intellectual Property Review, 2013
Federal Patent Malpractice Cases Bounced, published by World Intellectual Property Review, 2013
2012 Federal Circuit Patent Rulings, published by World Intellectual Property Review, 2013
Newest Forms Of Attack Against Patent NPEs, published by World Intellectual Property Review, 2013
On The Slate: Patent Decisions In 2013, published by World Intellectual Property Review, 2013
Surprise Twin High-Octane Patent Decisions, published by World Intellectual Property Review, 2014
The Patent Pay-For-Delay Scam, published by World Intellectual Property Review, 2014
AIA’s Patent Impact Upon Small Businesses, published by World Intellectual Property Review, 2014
Has Alice Put Your Patent Portfolio At Risk?, published by World Intellectual Property Review, 2014
2014 Post-AIA Patent Reform Is Dead, published by World Intellectual Property Review, 2014
The Increasing Impact of “Patent Trolls”, published by World Intellectual Property Review, 2014
Patent-FTO Caveats, published by World Intellectual Property Review, 2014
The Novelty Patent Search, published by World Intellectual Property Review, 2015
A Valuable Risk Management Tool, published by World Intellectual Property Review, 2015
The Co-Existence Of Design Patents And Trade Dress, published by World Intellectual Property Review, 2015
The Expired Patent Royalty Ban, published by World Intellectual Property Review, 2015
The Underappreciated Design Patent, published by World Intellectual Property Review, 2015
Getting The Best Deal, published by World Intellectual Property Review, 2016
Cuozzo Case: Weak Patents Suffer A Blow, published by World Intellectual Property Review, 2016
Avoiding A Startup Patent Catastrophe, published by World Intellectual Property Review, 2016
Narcissistic CEOs: Handle Patents With Care, published by World Intellectual Property Review, 2016
A Matter Of Trust, published by World Intellectual Property Review, 2016
Inappropriate Outsourcing May Invalidate Patents, published by World Intellectual Property Review, 2016
Rotten Patent Result For Apple, published by World Intellectual Property Review, 2016
The Design Patent For The World, published by World Intellectual Property Review, 2016
The Dangers Of Misnaming Patent Inventors, published by World Intellectual Property Review, 2016
Patent Eligibility After Alice, published by World Intellectual Property Review, 2017
Patent Exculpatory Opinions Post-Halo, published by World Intellectual Property Review, 2017
Understanding The Patent Exhaustion Doctrine, published by World Intellectual Property Review, 2017
TC Heartland: The Patent Venue Bombshell, published by World Intellectual Property Review, 2017
The Benefits Of The Provisional Patent Application, published by World Intellectual Property Review, 2017
Risky Business: The Challenge Of Patent Contingency Claims, published by World Intellectual Property Review, 2017
Patent Clash Of The Titans Continues, published by World Intellectual Property Review, 2017
Lectures & Speeches
Frequent lecturer in the area of intellectual property law, including the development of global business strategies involving intangible property rights.
Panelist, "Effectively Managing Your Company's IP Assets," 17th Annual General Counsel Conference, June 2005