Bill Valet’s diverse background in engineering and intellectual property law gives him a unique perspective when it comes to helping clients develop and protect their intellectual property. Having been an engineer for almost a decade designing automation equipment for the medical diagnostics industry, evaluating and testing consumer products for Underwriters Laboratories, and helping develop the superconducting radio frequency cavities and liquid helium cryogenic plant for the National Synchrotron Light Source II project at Brookhaven National Laboratory, Bill is intimately familiar with how a client’s business goals intersect with intellectual property law.
Understanding that each client is unique, Bill leverages his experience to understand each client’s individual challenges and business goals in order to provide tailored, individualized advice regarding intellectual property issues. With extensive experience preparing and prosecuting patent applications in myriad technological areas, Bill counsels clients through the process of obtaining intellectual property protection both in the U.S. and abroad. Depending upon client needs, he also conducts validity studies, clearance searches, patentability searches, and provides opinions regarding various intellectual property issues.
In order to understand the advances in his fields of technology and the evolution of patent law practice, Bill performs extensive research in addition to writing and publishing articles on IP related developments.
- Successfully appealed a 35 U.S.C. § 101 rejection in the immediate wake of the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank.
- Drafted and prosecuted over 100 patent applications in myriad technological fields in the U.S. and foreign patent offices.
- Conducted a large-scale freedom-to-operate study and product design counseling in the medical device field and drafted freedom to operate opinions covering relevant patents uncovered during the study.
- Successfully appealed dozens of rejections before the Patent Trial and Appeal Board with a proven track record of overcoming complex and difficult rejections.
Mr. Valet is experienced in a wide range of technologies, including the mechanical and electromechanical arts, electrical arts, medical devices, computer hardware and software, machine learning, optics and optical systems, semiconductors, consumer products, residential and commercial equipment, aeronautics, automotive, and solar arrays, amongst others.
Publications & Presentations
- Importing Limitations from the Specification into the Claims; When is it Proper?: New York Intellectual Property Association’s December 2016 – January 2017 edition of The Report
- Federal Circuit Lays Out Another Piece of the Software Patent Eligibility Puzzle: Lexology, October, 2016
- “Consisting of:” Not as Narrow as You Think: Lexology, August, 2016
- Improper Hindsight – The Forgotten Argument Given Renewed Teeth by the Federal Circuit: Lexology, April 2016
- Federal Circuit Continues to Clamp Down on IPR Amendment Practice: Lexology, January, 2016
- Think That Provisional Application Qualifies as Prior Art? Better Think Again: Lexology, September, 2015