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)
- United States Patent and Trademark Office
- 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
News & Press Mentions
Events & Speaking Engagements
- 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
Industries & Practices
- Banking & Financial Institutions
- Digital Health
- Energy & Natural Resources
- Legal Project Management
- Patent Prosecution, Portfolio Strategy & Management