Jennifer Lane Spaith
PEOPLE

Jennifer Lane Spaith

Partner
spaith.jennifer@dorsey.com
Seattle P +1 (206) 903-8836 F +1 (206) 299-9288 Palo Alto P +1 (650) 565-2228 F +1 (650) 857-1288

Overview

JENNIFER IS ADEPT AT FORMULATING AND EXECUTING ON CLIENTS’ IP STRATEGIES, EVEN IN THE MOST COMPLEX TECHNOLOGY FIELDS. SHE FREQUENTLY TEAMS WITH COLLEAGUES TO SEAMLESSLY DELIVER FULL SERVICE SOLUTIONS TO CLIENTS’ LEGAL NEEDS.

Jennifer Spaith is a Partner in the Intellectual Property group with over 10 years of experience as a patent attorney representing companies of all sizes in patent prosecution and portfolio management. She routinely works with a wide array of technologies ranging from electronics to artificial intelligence and other complex software systems to digital health and biosensor systems and clean or renewable energy technologies.

In addition to maintaining a patent procurement practice, Jennifer frequently advises clients on transactional matters involving technology and intellectual property. Prior to law school, Jennifer practiced with Dorsey as a patent agent.

Education & Admissions

University of California, Berkeley, School of Law (Boalt Hall) (J.D.), American Jurisprudence Awards: Property, Constitutional Law; Prosser Prize: Patent Law; Law and Technology Certificate

Massachusetts Institute of Technology (M. Eng., Electrical Engineering and Computer Science, 1999), National Science Foundation Graduate Student Fellowship Recipient

Massachusetts Institute of Technology (B.S., Electrical Science and Engineering, 1998)

Admissions

  • Washington
  • United States Patent and Trademark Office

Experience

Representative Work

  • Conducted invention disclosure meetings, prepared patent applications, and managed patent prosecution in technologies including  
    • Software including virtualized systems, artificial intelligence systems, cloud computing applications, and digital health solutions 
    • Electrical Devices including computer memory, video compression techniques, wireless communications including 4G and 5G systems, LIDAR systems, low power communication, and wireless power systems 
    • Clean technologies including waste-to-energy systems, renewable energy technologies, water purification, and smart home technologies 
    • Digital health and biosensor systems including health sensors, microfluidics, and medical imaging technologies 
  • Conducted patent due diligence and post-transaction title transfer in fields ranging from optical systems to wireless communication to medical devices and treatments 
  • Prepared license and other agreements in support of IP transfer, including co-development and joint venture arrangements; assisted in negotiation of IP terms in definitive transaction documents 
  • Counseled 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. 
  • Prepared patent policy and procedures for growing companies establishing or re-invigorating their patent programs. 
  • Counseled research scientists in small companies and government labs regarding patent protection strategies for core research. 
  • Analyzed standards-essential intellectual property and advised on patent strategy in view of standards body participation.

News & Resources

Articles

New Patent Office Guidance Released on Subject Matter Eligibility
Federal Circuit Finds Personalized Medicine Invention Subject Matter Eligible
Public Sales Remain Prior Art After AIA Even Without Disclosing Invention
Federal Circuit finds software patent for 3D animation technique patent eligible
U.S. Patent Office Releases Further Guidance on Patent Subject Matter Eligibility
U.S. Patent Office Releases Further Guidance on Patent Subject Matter Eligibility
"Sequenom, Alice and Mayo in 2016," Westlaw Journal Intellectual Property, Volume 22, Issue 26
Patent for Technology that “Revolutionized Prenatal Care” Nonetheless Invalid as Patent Ineligible
"Growing and Maintaining a Patent Portfolio in Times of Great Change." "Inside the Minds: The Impact of Recent Patent Law Cases and Developments." 2015 ed. Aspatore Books, 2015. 7-16. Print.
"Alice’s" Patent Invalidated as “Abstract,” But Court Declines to Articulate Standard Applicable across Industries
White House Announces Executive Actions Designed to Combat Patent Trolls
Clarity is King: CLS Bank v. Alice Corp
Unclear If "CLS Bank v. Alice" Really Will Be the “Death of Hundreds of Thousands of Patents”
After Mayo, Patent Office Will Require ‘Significantly More’ than a Law of Nature for Patentability
Patent Office Announces “Prioritized” Examination for a Fee
Patent Office Extends Pilot Program Fast-tracking Green Technology Innovations
Increased Liability for False Patent Marking Puts Manufacturers at Risk
New Patent Office Director Rescinds Rule Changes; Signals New Direction
"Patent Protection at Risk for Those Building a Better Business Method," Techline AeA
"Coping With the Uncertainty of the Patent Rules," AEA Techline
Note: "NTP, Inc. v. Research in Motion, Ltd: Inventions are Global, but Politics are Still Local," 21 Berkeley Tech L.J. 59
“The role of feedgas chemistry, mask material, and processing parameters in profile evolution during plasma etching of Si(100),” J.M. Lane, K.H.A. Bogart, F.P. Klemens, J.T.C. Lee, J Vac. Sci. Technol., A 18 (5): 2067-2079
“Mask charging and profile evolution during chlorine plasma etching of silicon,” K.H.A. Bogart, F.P. Klemens, M.V. Malyshev, J.I. Colonell, V.M. Donnelly, J.T.C. Lee, J.M. Lane J Vac. Sci. Technol., A 18 (1): 197-206
“Mapping of wafer profile to plasma processing conditions: Forward and reverse maps,” J. Lane, E.A. Rietman, N. Layadi, J.T.C. Lee, J Vac. Sci. Technol., B 18 (1): 299-302
“Feature evolution during plasma etching: II. Polycrystalline Silicon,” J.M. Lane, F.P. Klemens, K.H.A. Bogart, M.V. Malyshev, J.T.C. Lee, J Vac. Sci. Technol., A 18 (1): 188-196

News & Press Mentions

Dorsey Partner Jennifer Spaith Comments on USPTO Memo for Treatment Method Patents
Super Lawyers Recognizes 18 Dorsey Lawyers in Seattle
Super Lawyers Recognizes 14 Dorsey Lawyers in Seattle
Dorsey Partner Jennifer Spaith Remarks on Court's Decision on Breakthrough Patents
Super Lawyers Recognizes 13 Dorsey Lawyers in Seattle
Dorsey Partner Jennifer Spaith Comments on Financial Engines Patent Case
Jennifer Spaith in Forbes, CNN Money and other outlets on ‘Abstract’ Software Patent Ruling
Super Lawyers Recognizes 20 Dorsey Lawyers in Seattle
Dorsey Partner Jennifer Spaith Comments on "Alice Corp. Ltd. v. CLS Bank International"
Dorsey Partner Jennifer Spaith Comments on "Alice Corp. Ltd. v. CLS Bank International"
12 lawyers in the Firm’s Seattle office named Super Lawyers™ and six named Rising Stars by Washington Super Lawyers
Dorsey Names Nine New Partners

Select Presentations

  • Panelist at University of Washington's IP Speaker Series, "A Panel Discussion on IP Rights in Software (CLS Bank v. Alice Corp. and Oracle v. Google)," May 15, 2014
  • Speaker at the MIT Energy Initiative event, “Energy Innovation and Entrepreneurship in Seattle," October 11, 2012
  • Speaker at the MonTEC Innovation Roundtable, “Protecting Your IP,” Missoula, MT, September 5, 2012
  • Panelist for “The Business of Innovation” at the Montana Innovation and Entrepreneurship Day in Missoula, MT, June 21, 2012
  • "Patent Strategies for Clean and Renewable Industries After the America Invents Act," Infocast webinar, April 4, 2012
  • "The America Invents Act: Practical Strategies for Managing Patent Rights after America Invents," Seattle, WA, December 6, 2011
  • "Intellectual Property and the America Invents Act," TechRanch, Bozeman, MT, Dec. 1, 2011, 
  • "Understanding the Impact of the 2011 America Invents Act," University of Montana, Missoula, MT, Nov. 30, 2011
  • "Protecting and Leveraging Innovation Through Patents," presenter, Washington State Bar Association CLE Program, September 24, 2009

Professional & Civic

Professional Achievements

  • Clean Tech Alliance, Board Member  
  • Intellectual Property Owners Association
  • MIT Enterprise Forum of the Northwest
  • American Intellectual Property Law Association
  • Washington State Intellectual Property Law Association

Accolades

  • Listed as a “Rising Star” by Washington Super Lawyers, 2013-2017
  • Recognized by Corporate LiveWire Magazine's Global Awards 2016 for “Intellectual Property”
Jennifer Lane Spaith