Named one of the leading IP Lawyers in California by the Daily Journal, Mr. Fahmi is among the most experienced Patent Office litigation practitioners in the country. He has acted as lead counsel in more than two hundred inter partes and covered business method patent reviews before the USPTO Patent Trial and Appeal Board on behalf of both petitioners and patent owners. In addition to this specialty, his practice spans more than two decades worth of patent portfolio development and technology licensing on behalf of companies throughout the world and includes representations before the U.S. Court of Appeals for the Federal Circuit and U.S. District Courts.
In his role as an IP counselor, Mr. Fahmi has provided clients with in-depth assessments of their own as well as their competitors’ IP portfolios. Such reviews enable him to assemble a complete IP plan that will maximize protection of a client’s products or services. Whether it be for a solo inventor or a Fortune 100 company, Mr. Fahmi has developed forward-looking IP asset development and acquisition strategies that that take a broad view of how best to enhance a client’s business needs.
Just as important as acquiring IP assets is actively managing them. To that end, Mr. Fahmi assists clients in conducting infringement, validity and enforceability studies, freedom to operate analyses accompanying new product development, IP-related due diligence reviews in connection with proposed transactions, and negotiating patent licenses and technology transfer agreements to generate revenue and increase market penetration. All of these activities inform his advice to clients concerning how and where to file and maintain patent rights in order to protect their business goals.
In helping clients extract value from IP assets, Mr. Fahmi often acts as the lead investigating attorney to analyze IP portfolios of potential merger and acquisition targets, assist businesses in performing internal due diligence evaluations; and negotiate complex IP transactions. When it comes to helping clients with licensing matters, he provides strategic advice on structuring licensing programs to best meet clients’ needs and objectives, and also negotiate and prepare the licensing agreements. To ensure that IP assets remain safeguarded Mr. Fahmi routinely assists clients by performing sensitive information audits to help identify vulnerable proprietary information, developing information policy guidelines for use and control of confidential information, and drafting confidentiality and non-compete agreements for employees and strategic partners.