Biography

Alan is a Patent Counsel and Patent Strategist with both law firm and in‐house experience. He works with clients ranging from start‐ups to publicly traded companies to help them develop and implement strategies for protecting their intellectual property, and to address issues that arise in the course of their business operations. He has extensive experience in building and managing high value patent portfolios based on complex technologies. He also assists clients to design and implement in‐house Patent Programs, including a program’s infrastructure and processes.

Alan works with executive, scientific, engineering, and product management personnel to identify innovations in a client’s products and services and to develop an appropriate protection strategy, with consideration for a client’s long term business objectives, budget, and competitive environment. He has also pioneered the delivery of patent and IP related services using an outside patent counsel model that has proven to be both cost-effective and highly valuable to clients. In addition to patent program and patent portfolio management, in this role he is often asked to participate in invention mining or brainstorming sessions with founders, CTOs, scientists, engineers and product development personnel.

Alan provides a range of legal services including:

  • Identifying potential innovations in a client’s products and services and determining an effective strategy for protecting those innovations;
  • Patent application drafting and patent procurement;
  • Patent portfolio evaluation and strategies for increasing the value of patent portfolios;
  • Due diligence for purposes of product clearances, mergers, acquisitions and pre-litigation risk assessment;
  • Strategically focused patent portfolio development and management;
  • Establishing and administering in-house patent programs for clients; and
  • Serving as an outside Patent Counsel and adviser to company executives.

Among others, Alan has experience in protecting innovations that are part of or use the following technologies:

  • Electronic payment systems and mobile payment applications;
  • Network security and detection of malicious messages;
  • Mobile device user interfaces and wireless data services;
  • E-commerce business models;
  • Virtual reality/augmented reality platforms;
  • Natural language processing (NLP);
  • Training and use of Machine Learning models;
  • Software as a service (SaaS) platforms;
  • Messaging systems;
  • Search methods;
  • Imaging arrays;
  • Radar systems and radar signal processing;
  • Signal and image processing methods (including the use of convolutional neural networks);
  • Hybrid powered aircraft and related systems;
  • Neural Networks;
  • Adaptive control systems;
  • Electro-optical devices (e.g., optical computers); and
  • Graph Databases and Ontologies.

Alan’s clients have included Visa, Amazon, NetSuite, Zuora, Micron, National Semiconductor, Pixar, Jawbone, The Allen Inst. for AI, The Allen Inst. for Brain Science,  Nordstrom, Helpshift, Accretive Technologies, Outbound AI, Cognitiv AI, Moveworks, Duolingo, WellSaid Labs, Snorkel AI, Evisort, System, and Proofpoint.

As an engineer prior to attending law school, Alan was a radar system analyst and developed mathematical models of infrared and optical detection systems.

Corporate Experience
  • Openwave Systems, AGC and Chief Patent Counsel
  • Intellectual Ventures, VP
  • NetSuite – Outside Chief Patent Counsel
Publications
  • “What Patents’ Status as Franchises means For NPEs”, Law360, January 24, 2020
  • “The Benefits of Using a “Virtual” Patent Counsel,” Intellectual Property and Technology Law Journal, Vol. 31, No. 8, August 2019
  • “Developing a Patent Portfolio That is a Strategically Valuable Business Asset,” The Licensing Journal, Vol. 38, No. 8, Sept. 2018
  • “Building a Valuable Patent Family Using the Technique of Functional Deconstruction,” Lane Powell’s Beyond IP Law (Feb. 24, 2016)
  • “Selecting the Appropriate Patent Counsel and Why It Matters,” Lane Powell’s Beyond IP Law (Feb.5, 2016)
  • “Jawbone Successfully Leverages Patent Portfolio as Collateral in Fund Raising Efforts,” Lane Powell’s Beyond IP Law (Jan. 27, 2016)
  • “A Key Obstacle to Implementing a Patent Strategy and One Way to Overcome It,” Lane Powell White Paper (Dec. 23, 2013)
  • “Patent Protection as Investment and Insurance,” Corporate Counsel magazine (May 6, 2013)
  • “Is There Justification for Greater Transparency in Patent Transactions?” Patently‐O blog, Guest Post (March 21, 2013)
  • “Innovation, Development and the In‐House Patent Program,” Law360 (Dec. 10, 2012)
  • “Protect Your Company — And Increase its Value with a Strategic Patent Portfolio,” Seattle Business Magazine (Oct. 2012)
  • “Old Model: Patents Protect Products. New Model: Patents Themselves Are Products,” Forbes CIO Central (June 1, 2012)
  • “The Patentability of Algorithms: An Update on the Status of the Current Doctrine,” 9 Santa Clara Comp. & High Tech. L.J. 233, (1993)
  • “The Patentability of Algorithms: A Review and Critical Analysis of the Current Doctrine,” 8 Santa Clara Comp. & High Tech. L.J. 251, (1992).

Alan D. Minsk

Partner

Credentials

Admissions

  • California
  • U.S. Patent & Trademark Office (USPTO)

Education

Harvard Law School, J.D., 1991

University of California, Berkeley, M.A., Physics, 1981

University of California, Berkeley, B.A., Astronomy, 1979

Prior Law Firm Experience

Limbach and Limbach

Coudert Brothers

Kilpatrick Townsend and Stockton

Lane Powell