Elliott J. Williams

Elliott J. Williams
Associate
Portland, OR
Overview

About Elliott

Thank you for reading my bio. I help inventors, artists, and their businesses protect their innovations in order to keep their creativity productive.

I do patent infringement litigation, copyright and trademark litigation, demand letters, cease and desist letters, departed-employee disputes, patent prosecution, patent clearance, and diligence review of IP-related assets. This often happens in federal court or before the U.S. Patent and Trademark Office. My experience is primarily in mechanical and optical innovations.

Before I turned to the law, I was a freelance web programmer and a junior and senior high school science teacher at a small private school in Beaverton, Oregon.

 

 

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Experience

Experience

Litigation

  • Represented publishing company by filing litigation in response to false accusations of trademark infringement, resulting in a release of all claims and payment of compensation by the accuser.
  • Represented a specialized vehicle systems company regarding product design knockoffs imported by vehicle manufacturer and resulting in an advantageous settlement for the client.
  • Successfully petitioned to recovery attorneys’ fees in trademark litigation following judgment in favor of defendant.
  • Represented electronics company in supply dispute with a primary customer and shareholder resulting in an advantageous settlement and re-purchase of shares.
  • Represented visual display technology company against breach of contract allegations by an independent sales agency resulting in dismissal of all claims.

Intellectual Property Enforcement

  • Provided brand enforcement services for food decorating company.
  • Operated licensing program of patent portfolio relating to sport optics.
  • Drafted cease and desist letters relating to unauthorized use of patents and trademarks.

Patent Prosecution

  • Drafted patent application for sliding door following patentability and freedom to operate analysis.
  • Drafted and amended claims relating to a system for atomic layer deposition.
  • Drafted portfolio of design patent applications to protect client’s warning light systems in the U.S. and foreign patent offices.
  • Represented door manufacturer in analyzing new product designs for patent clearance and patentability.

Trademark Registration

  • Advised branded chemical coatings manufacturer with respect to expansion and maintenance of foreign and domestic trademark portfolio.

Transactional

  • Supported software company’s revisions to its credit card payment processing policies through comprehensive review of applicable state, federal, and contract rules. Implemented a system to track and maintain compliance with changes in the field.
  • Represented optical device company by performing due diligence on patents for potential technology acquisitions.
  • Represented food product manufacturer by performing due diligence on patent and trademark rights owned by potential acquisition target.
  • Represented tool company in negotiating product development and technology license agreements with inventors.
  • Drafted and revised non-disclosure agreements for private investment company in relation to proposed investments.
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Honors

Honors & Activities

Professional Honors and Activities

  • TiE Oregon
  • Oregon Entrepreneurs Network
  • Federal Circuit Bar Association
  • Intellectual Property Section, Oregon State Bar
  • Multnomah County Bar Association

Civic Activities

  • Volunteer, Legal Aid Society of Oregon
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Insights & Presentations

Insights & Presentations

  • Trade Secrets Challenges for Patent Prosecutors and Litigators,” Randolph C. Foster and Elliott K. Williams, 2016 Electronic and Computer Law Summit, Electronic and Computer Patent Law Committee of the American Intellectual Property Association (paper presented and published June 14, 2016)
  • Presenter, “Construing ‘Consisting Essentially Of’,” Stoel Rives Patent Law Group, April 2016
  • Contributor, “Chapter 17: Employee Mobility, Restrictive Covenants, and Trade Secrets,” Recent Developments in Business and Corporate Litigation, American Bar Association, 2016 edition
  • Presenter, “Trade Secrets, Noncompetes, and Preventing Employee Data Theft,” Stoel Rives Breakfast Briefing, Sept. 2015
  • Presenter, “Teva v. Sandoz,” Stoel Rives Patent Law Group, Feb. 2015
  • Contributor, “Chapter 17: Employee Mobility, Restrictive Covenants, and Trade Secrets”, Recent Developments in Business and Corporate Litigation, American Bar Association, 2015 edition
  • Contributor, “Intellectual Property Considerations,” Washington Lawyers’ Practice Manual, Business Law Chapter, 2015
  • “Equitable Discretion and the Patent Owner’s Delay,” Boston Patent Lawyers Association Newsletter, 2014



Related News & Publications


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