Tony Barkume

✉️ tony@smb.law

📞 (631) 259-9099

📇 vCard

📎 Tony’s CV

Tony represents clients of all sizes, from individual inventors and start-ups to multi-national corporations, and understands the value of IP from the business perspective. Tony has expertise in mobile and wireless technologies, computer hardware and software, network and Internet-based inventions, security systems including alarm and access control systems, sensor technologies, e-commerce, reward/loyalty systems, financial instruments, radio frequency and antenna technologies, and bar code systems and methodologies.

Areas of Concentration

  • Focus on preparation, prosecution and acquisition of patents in the United States and abroad (written/prosecuted over 250 issued patents); management and strategies for large patent portfolios

  • All phases of prosecution before the U.S. Patent and Trademark Office, including Examiner interviews, appeals, strategic use of continuation practice, offensive and defensive patent reexaminations

  • Successful prosecution in overcoming 101/Alice rejections, including Supplemental Examination procedures

  • Proceedings before the Patent Trial and Appeal Board (PTAB) including Appeals and Covered Business Method proceedings

  • European Patent Office proceedings at The Hague and Munich including Oral Proceedings in prosecution and opposition phases for European patents.

  • Analysis of third party patent portfolios for freedom of use opinions, development of non-infringement/ invalidity positions, risk analysis, counseling in product design-around for liability avoidance, claim charts and analysis for litigation support

  • Review of third party products and services, determination of infringement of client’s patents with recommendations for litigation or licensing

  • Extensive experience in developing progressive licensing strategies from both the licensor and licensee perspectives, brainstorming sessions and invention mining within business groups, presentation of in-house patent seminars, and development of a corporate patent-centric approach

  • Intellectual property audits and analysis, support of mergers and acquisitions and other corporate transactions through due diligence reviews, portfolio analysis, risk assessment

Member

  • American Intellectual Property Law Association

  • New York State Bar Association

Admitted to Practice

  • New York State

  • U.S. District Courts for the Southern District of NY and Eastern District of NY

  • United States Patent and Trademark Office

  • United States Court of Appeals for the Federal Circuit

Education

  • St. John’s University School of Law, J.D. magna cum laude 1991; Law Review

  • Stony Brook University, B.E. in Electrical Engineering 1980-1982        

  • Columbia University, School of Engineering & Applied Science 1977-1979

Experience

Legal

  • Greenberg Traurig LLP, New York, NY: Partner, Co-Head of Patent Prosecution for IP National Practice Group

  • Symbol Technologies, Inc., Holtsville, NY: In-House Patent Counsel

  • White & Case, New York, NY: Associate

  • Hedman, Gibson & Costigan, P.C., New York, NY: Patent Attorney

Engineering

  • Hazeltine Corp., Greenlawn, NY: Senior Design Engineer

  • AIL Corp., Deer Park, NY: Electrical Engineer