William R. Allen, Ph.D.
William, a partner in the firm’s Intellectual Property practice, counsels clients on an array of patent and trademark issues, helping them manage, protect and capitalize on their IP assets. He prepares and prosecutes domestic and international patent and trademark applications, conducts due diligence, prepares legal opinions and represents clients’ interests in post-grant review proceedings.
Prior to practicing law, William spent over a decade as a laboratory physicist at Oak Ridge National Laboratory and the Y-12 National Security Complex in Oak Ridge, Tennessee. He also served as an adjunct professor in the Materials Science and Engineering Department at the University of Tennessee.
William guides clients through all phases of preparing and prosecuting a patent application, as well as developing strategies for securing patent protection of an invention and commercializing an invention for which patent protection may be sought. He is particularly skilled in procuring patent protection for clients spanning a broad spectrum of technologies and actively protects technical innovations for several large multinational companies.
William implements strategies that minimize client spend, such as applying specific best practices geared toward efficient preparation and compact prosecution, the use of quality control software tools, and the use of patent examiner analytics to guide his actions during U.S. prosecution. William provides effective stewardship by managing patent portfolios in a manner that provides a meaningful return-on-investment to his clients.
William holds a Ph.D. in physics and a B.S. in physics and mathematics. He has wide-ranging experience in electrical, mechanical, and materials technologies including semiconductor device fabrication and integrated circuits, data management software, cosmetic surgery instruments and procedures, medical devices, metalworking tools and processes, automated pharmacy systems, pharmaceutical packaging, wind turbines, gas turbines and engines, tires and tire-manufacturing equipment, integrated circuit processing tools, and X-ray and optical inspection tools. While a physics professional, he co-authored numerous publications in scientific journals.
With an advanced degree in physics and extensive professional experience gained over the course of 20+ years as a patent practitioner, William possesses the ability to comprehend the technical advances underlying his clients’ innovations and to effectively advocate on their behalf at the U.S. Patent and Trademark Office and at patent offices worldwide.
A sampling of William’s experience includes:
- Representing corporations, entrepreneurs, individual and startups with regard to the preparation and prosecution of patent applications with a focus on securing patent protection in a timely, cost-effective manner to protect technical innovations.
- Developing worldwide strategies for protecting intellectual property assets and portfolios.
- Managing global patent portfolios or portfolio segments for multinational corporations.
- Serves as outside U.S. patent counsel for an $8 billion travel technology company.
- Serves as outside U.S. patent counsel for a $6 billion semiconductor foundry.
- Serves as outside U.S. patent counsel for a division of a
$9 billion specialty pharmaceutical company.
- Procuring over 700 U.S. patents protecting various technical innovations developed by a high technology client, including securing protection for technologies covering core inventions.
- Responding to several thousand domestic and foreign Office Actions.
- Prosecuting to grant over one thousand U.S. patents and their foreign equivalents.
- Advising clients on effective replies to cease-and-desist letters.
- Preparing broadening reissue and continuation reissue applications to extend the scope of client patent protection.
- "USPTO Unveils New Web-Based Intellectual Property Marketplace Platform," Thompson Hine COVID-19 Update, May 2020
- “RIM v. NTP, Yet Again: BlackBerry’s ill-fated patent dispute with NTP takes a final turn,” IEEE Spectrum, July 2010
- Selected for inclusion in The Best Lawyers in America© 2018 to 2022 for Patent Law and Technology Law
- Institute of Electrical and Electronics Engineers
- Intellectual Property Owners Association
- International Trademark Association
- Northern Kentucky University Research Foundation, Board of Directors, 2016-2019
- All Ohio Annual Institute on Intellectual Property, Planning Committee, 2015-2016