Overview

Jonathan Barnard is a senior associate in Stoel Rives’ Technology & Intellectual Property group. As a registered patent attorney, Jonathan focuses his practice on domestic and international patent preparation and prosecution, as well as IP counseling and licensing. He advises public companies, venture-financed companies, and startups in a wide variety of intellectual property matters.

Jonathan’s patent procurement experience includes developing patent-filing strategies and portfolio-management programs, and preparing and prosecuting patent applications, as well as providing post-grant analysis. With a background in applied mathematics and physics, Jonathan regularly advises companies in computer software, cloud computing, mobile applications, telecommunication, and electrochemical areas, among others. He also represents clients that manufacture a range of products in the electrical, computer, mechanical, and software arts.

Jonathan also counsels clients in patentability, patent validity, patent infringement, due diligence and freedom to operate, product clearance, intellectual property litigation risk-mitigation strategies, IP licensing, standards-essential patent licensing, privacy and data security, open sourcing, and technology transactions.

While in law school, he was a judicial extern for the Honorable Justice Debra L. Stephens of the Washington State Supreme Court, as well as a law clerk in the legal department of a global, Seattle-based technology company.

Education

Seattle University School of Law, J.D., 2017, cum laude; Associate Editor, Seattle University Law Review; Order of the Barristers; Moot Court Board; CALI Award (IP Licensing)

Gonzaga University, B.S., Mathematics, 2014, cum laude; Pi Mu Epsilon, National Honorary Mathematics Society; Multiple Academic Scholarship Grants

Admissions

Washington

U.S. Patent and Trademark Office

Experience

  • Conducts invention disclosure meetings, prepares U.S. and Patent Cooperation Treaty (PCT) patent applications, and manages patent prosecution for a variety of technologies both domestically and internationally, including but not limited to:
    • Electrical Devices: electronics, wireless communication systems, satellite communication systems, power grid and battery technology, light detection and ranging (LiDAR) systems, robotic systems, computer memory, low power semiconductor devices, and energy storage.
    • Software: virtualized software systems, machine learning, audio engineering systems, augmented and virtual reality (AR/VR) applications, cloud computing, cloud video gaming services, healthcare systems software, emergency services software systems, medical data analytics, Internet analytics (search, ads, maps, and social), graphical user interfaces (GUIs), Internet of Things (IoT), complex event and data processing, GPS and radiolocation systems, RFID systems, signal processing, and digital image processing.
    • Mechanical and Medical Devices: rain and stormwater management technologies, respiratory and vision medical device technologies, pathogen detection devices, computer accessories, construction equipment, and other mechanical systems.
  • Counsels clients on patent strategies, including use of expedited examination techniques, provisional applications, development of a global portfolio footprint, and preparation for patent assertion and defense.
  • Conducts harvesting sessions to identify and pursue product-driven and commercially relevant technologies.
  • Counsels clients regarding business-relevant patent portfolio development, growth, and management.
  • Evaluates patent portfolios to determine licensing, cross-licensing, and acquisition opportunities.
  • Evaluates patent portfolios to develop enforcement and defensive positions, including for competitive coverage, litigation risk, and targeted content.
  • Evaluates technology transfer and technology license agreements, including licenses for products (software/hardware) as well as standards-essential patents.
  • Analyzes asserted patents and related trial documents to develop IP litigation risk-mitigation strategies.
  • Drafts offensive and defensive opinions for patentability, patent invalidity, and patent infringement issues.
  • Counsels clients regarding third-party ex parte re-exam, inter partes review, and post-grant challenges.
  • Negotiates patent licenses agreements with domestic and international entities.
  • Advises on open-source licensing issues and compliance.

Insights

Insights & Presentations

Presentations

  • “Developments in Patent Law,” Annual Meeting & CLE, Washington State Patent Law Association, Seattle, WA, May 2024
  • Guest Lecturer, University of Washington, Course ENGR 494 “Engineering Design and Innovation,”—Presentation to Electrical, Computer, and Mechanical Engineering students at the start of their senior capstone sequence regarding introduction to the U.S. law of intellectual property (including trademark, trade secret, and copyright), with an emphasis on patents, including what can be patented, the process of patent application, and the remedies for patent infringement, Seattle, WA, February 2024
  • Guest Lecturer, University of Washington, Course ENGR 494 “Engineering Design and Innovation,” Seattle, WA, December 2023
  • “Federal Circuit Year in Review—Venue and IPR Issues,” Technology and Intellectual Property Training Series & CLE, Stoel Rives LLP, Seattle, WA, July 2023
  • “Developments in Patent Law,” Annual Meeting & CLE, Washington State Patent Law Association, Seattle, WA, May 2023
  • Guest Lecturer, University of Washington, Course ENGR 494 “Engineering Design and Innovation,” Seattle, WA, February 2023
  • Guest Lecturer, University of Washington, Course ENGR 494 “Engineering Design and Innovation,” Seattle, WA, November 2022
  • Guest Lecturer, University of Washington, Course ENGR 494 “Engineering Design and Innovation,” Seattle, WA, October 2021 

Publications

  • Co-Author, USPTO Guidance Establishes Principles for Human Inventorship of AI-Assisted Inventions, Stoel Rives Legal Alert, February 13, 2024
  • Contributing Author, Dorsey Legal Arcade: Video Game Law Review, Vol. 1, Issue 3, February 24, 2022
  • Contributing Author, Dorsey Legal Arcade: Video Game Law Review, Vol. 1, Issue 2, September 29, 2021
  • Contributing Author, Dorsey Legal Arcade: Video Game Law Review, Vol. 1, Issue 1, February 17, 2021
  • “Audio Giant Silencing the Competition: Sonos Continues Its Competitor-Centric Patent Offensive, This Time Against Bluesound and Their PULSE Line of Wireless Networked Audio Technology,” Cloud IPQ: Enhancing Your Cloud IP IQ, August 19, 2019
  • “Zillow Sues Rival Compass Alleging IP Theft and Breach of Contract Over Its Artificial Intelligence, Machine Learning, and Cloud Computing Real Estate Technologies,” Cloud IPQ, May 16, 2019
  • “Your Card’s Been Declined: Patent Troll Vindolor Continues Its Year-Long Point-of-Sale Patent Litigation Campaign Against Three New Unsuspecting Household Names,” Cloud IPQ, March 18, 2019
  • “NICE Files Patent Lawsuit Against CallMiner over Cloud-Based Speech Analytics, Call Monitoring, and Data Security Technology Solutions,” Cloud IPQ, January 29, 2019
  • “Tax Compliance Giant Not in Compliance? PTP OneClick Asserts Patent Infringement and Trade Secret Misappropriation Claims Against Avalara in Recent Lawsuit,” Cloud IPQ, December 11, 2018
  • “WARNING—All Activities Are Being Monitored: I-View Now Asserts Its Centrally Monitored Cloud Architecture Security Technology in Patent Suit Against Police Priority,” Cloud IPQ, October 20, 2018
  • “Your Number’s Been Blocked: UCaaS Incumbent RingCentral Asserts Its Communications Solutions in Patent Assault against Competitor Dialpad,” Cloud IPQ, September 13, 2018
  • “Tesla Seeks Inspection of Former Employee’s Cloud Storage Accounts—Lawsuit Highlights the Need for Diligent Security Efforts by Cloud Technology Users,” Cloud IPQ, July 10, 2018
  • “Cloud Cybersecurity Solutions Under Siege from Patents, Again: Cybersecurity Companies Protect Customers from Malicious Attacks, but Can They Protect Themselves?” Cloud IPQ, May 29, 2018
  • “Loved by Many, Cloud-Based Remote DVR Programming Functionality Falls Victim as Rovi Files Second Patent Infringement Strike Against Comcast,” Cloud IPQ, March 19, 2018
  • “Cloud Cybersecurity New Hot Area for Patent Disputes: Blue Coat Systems in Major Patent Battle on Its Cloud-based Security Products,” Cloud IPQ, January 22, 2018
  • “Cloud Printing Companies in a Jam, Face Battle with Patent Trolls,” Cloud IPQ, September 29, 2017
  • “Brave New Borderless World: Standardization Would End Decades of Inconsistency in Determining Proper Personal Jurisdiction in Cyberspace Cases,” 40 Seattle U. L. Rev. 249 (2016)

Speaking Engagements

Recognition

  • Included in Best Lawyers®: Ones to Watch in America (Intellectual Property), 2022–present
  • Listed among Rising Stars (Intellectual Property, Intellectual Property Litigation, Technology Transactions), Washington Super Lawyers®, 2022–present
  • Recognized in Puget Sound Business Journal’s “Next Generation in Law” series, April 2024
  • Stoel Rives, LLP, Seattle Mentor of the Year, 2024
  • Included in JD Supra’s Top 10 Most Read List, Patents, 2019
  • Included in JD Supra’s Top 10 Most Read List, Intellectual Property, 2018

Affiliations

Professional

  • Washington State Patent Law Association, Board of Directors
  • QLaw Foundation of Washington, Board of Directors
  • The National LGBT Bar Association
  • QLaw: The LGBT Bar Association of Washington
  • ChIPs: Advancing Women in Tech, Law, & Policy
  • The Promise of Justice Initiative: Jim Crow Juries, Pro Bono Attorney
  • KIND: Kids in Need of Defense, Pro Bono Attorney

Civic

  • Pride Foundation, Scholarship Selection Committee (STEM fields)
  • Thurgood Marshall College Fund, Scholarship Selection Committee (STEM fields)
  • Nike Youth Special Olympics (Oregon), Volunteer
  • St. Jude Children’s Research Hospital, Volunteer
  • IPO: Intellectual Property Owners Association
  • American Mathematical Society
  • Society for Industrial and Applied Mathematics
    • Subgroup membership in Applied and Computational Discrete Algorithms
    • Subgroup membership in Computational Science and Engineering

Industries

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