Robert Irvine, a partner at TechLaw LLP, is based in Chicago and focuses his practice on intellectual property procurement and client counseling in the electronic arts. Over the last 20 years, he has represented Fortune 100 companies as well as individual inventors in patent prosecution, litigation and licensing matters relating to inventions of an electrical nature. Most recently Mr. Irvine headed the in-house patent prosecution group at InterDigital Communications, where he specialized in strategic patent portfolio development of wireless telecommunications systems including LTE, LTE-Advanced, WCDMA, and 802.11 technologies.

Mr. Irvine has an extensive background in telecommunications, with expertise in areas such as digital signal processing, probability theory, information theory, data mining, cryptography, analog and digital circuits, semiconductor structures, and network protocols.  Much of his work has been in physical layer signal processing and networking, including modulation schemes (OFDMA, QAM, PSK, MIMO), coding techniques (convolutional coding, Viterbi decoding), equalizers, clock and data recovery circuits, video compression (H.264, HEVC, SVC), routing protocols (BGP, OSPF, MPLS, VPN, GRE, L2TP, PPTP, RTP, SIP), mobility management (MIP, GTP), spectrum management, and content delivery (CDNs, DASH).

He also has a wide range of experience in financial products and services, including financial trading systems, exchange-traded fund structures, options products, and hedging strategies and insurance products.

Mr. Irvine often works with private equity firms, venture capitalists, and start-up companies, and is able to cost-effectively manage the various IP issues that may arise, as well as to help companies establish a beachhead to protect their own home-grown intellectual property. Because of the nature of his practice, Mr. Irvine is able to invest his time and energy in helping smaller entities obtain “big firm” services at a reasonable cost through alternative billing arrangements.

Practice Areas

Mr. Irvine’s legal and business experience allows him to provide specialized legal counsel in the following patent prosecution areas:

I. Patent Portfolio Development

There are many facets to developing an effective patent portfolio. Mr. Irvine provides comprehensive portfolio development services to maximize the value that can be extracted from the assets, whether it’s through licensing, sales, or obtaining broad coverage to protect the business. His services include:

•Conducting portfolio review and gap analysis to identify strengths and weaknesses of the client portfolio and of the relevant competition;

•Leading Strategic Inventing Sessions with inventors and project leaders to ensure patentable subject matter is identified and protected;

•Preparing Patent Applications, with emphasis on:

using creative claiming strategies for complex technologies;

formulating claims that are well-suited for licensing by avoiding multiple infringer problems and exhaustion;

ensuring claims take into account the relevant revenue and business models where the invention may be used;

preparing claims in all statutory classes (when appropriate) to provide broadest coverage, including method, apparatus, system, computer readable media, means-plus-function.

•Developing existing patent assets by ming the specifications of already filed applications to identify unclaimed subject matter, and then preparing Continuation, Divisional, and Broadening Reissue Applications.

II. IP Due Diligence

When purchasing IP assets, or even preparing for a sale of your own assets, knowing the rights, value, and risks associated with the assets is critical.  Mr. Irvine assists clients in conducting the necessary investigations, such as:

•Conducting audits of software code provenance to ensure proper title and to identify the use of open source software, and conformance with associated license obligations;

•Reviewing patent assignment documents to ensure proper title;

•Analyzing patent prosecution file histories to identify strengths and weaknesses of patent assets.

III. Patent Risk Analysis

Mr. Irvine’s practice also includes preparing Patent Clearance opinions; Patent Invalidity and Non-infringement Opinions; and developing design-around strategies to avoid infringement.

Professional Profile

Mr. Irvine joins us from InterDigital Communications, where he successfully established a new in-house patent prosecution group and lead a team of patent professionals in developing licensable patent assets for the company.  Mr. Irvine began his career working as an engineer in Motorola’s Digital Technology Corporate Research Lab.  Then, after completing law school, Mr. Irvine began his legal career at the law firm of Niro Scavone Haller & Niro primarily working on contingent fee litigation matters. He then joined the patent law boutique firm of MBHB, where for 14+ years he built his practice in the telecommunications and financial services areas.

Mr. Irvine received a BS and an MS in electrical engineering from the University of Illinois at Urbana-Champaign and his law degree from Northwestern University. He is co-inventor of U.S. Patent No. 5,121,414, entitled “Carrier Frequency Offset Equalization.” Mr. Irvine is a member of IEEE, and the Tau Beta Pi and Eta Kappa Nu engineering honor societies.

Mr. Irvine is admitted to practice before the Bar in the State of Illinois and the United States District Court for the Northern District of Illinois.  He is a registered arbitrator for the National Futures Association, and is a member of AIPLA, the Licensing Executives Society, and the Illinois State Bar Association.