Harold Fox offers clients tactical intellectual property counsel and strategic patent advice. In addition to his successful patent prosecution practice, Harold advises clients on critical aspects of patent portfolio development. More specifically, he provides strategies to manage post-grant proceedings, applies creative approaches to product life-cycle management, and develops insightful patent enforcement tactics. Harold also offers patent validity and infringement opinions, conducts intellectual property diligence investigations, handles trademark and domain name issues, and evaluates intellectual property issues arising from government contracts. He advises clients in all areas of chemistry, biotechnology, pharmaceuticals, biologics, nanotechnology, physics, chemical engineering, mechanical engineering, medical devices, business methods, and materials science. As a significant portion of his practice, Harold has represented emerging and established companies, academic institutions, as well as domestic and international corporations in post grant proceedings at the U.S. Patent and Trademark Office, in Section 337 investigations at the U.S. International Trade Commission, and in appeals at the U.S. Court of Appeals for the Federal Circuit. Chambers USA has declared Harold a leading DC patent prosecutor, noting his "command of matters involving a truly impressive range of technical and scientific disciplines, from biotechnology through nanotechnology to materials science." According to lAM Patent 1000 client commentary, Harold is "strategically smart, responsive, and always on top of things to the very end."
- Developed and implemented patent portfolio protection strategy for key pharmaceutical product patent assets involved in over a dozen competitor and Hatch-Waxman patent litigation matters, including successfully defending multiple Inter Partes Review (IPR) validity challenges and reexaminations at the US Patent and Trademark Office, upholding validity of all patent claims through appeals.
- Created trade secret protection policies for multi-national and multi-party joint venture projects for a Korea-based chemical company working with emerging US companies.
- Conducted intellectual property due diligence and created patent portfolio development strategies for a pharmaceutical and biotechnology corporation leveraging US and China market opportunities. Projects also included settling disputes regarding theft of trade secrets and patent assets by a vendor.
- Structured and implemented intellectual property strategy for start-up pharmaceutical company from its inception, including patent litigation avoidance strategies for a 505(b)(2) product and building a patent estate with more than three dozen patents eligible for Orange Book listing.
- Designed and implemented innovation capture program for a rapidly growing renewable energy company, resulting annual application filing rate of over 50 applications per year while maintaining a technology development strategy that mitigated potential patent litigation issues. Projects included IP positioning of the company for its IPO.
- Defended highly licensed academic patent portfolio from Inter Partes Review (IPR) challenges, resulting in key claims being found not unpatentable.
- District of Columbia
- New York
- U.S. Patent and Trademark Office (USPTO)
- U.S. Court of Appeals for the Federal Circuit
- IAM Patent 1000, Prosecution: DC Metro Area (2013-2020)
- World Intellectual Property Review Leader (2016-2021)
- Chambers USA, Intellectual Property: Patent Prosecution, District of Columbia (2013-2016)
- Legal 500 US, Intellectual Property: Copyright (2018)
- Legal 500 US, Intellectual Property: Trade Secrets, Litigation and Non-Contentious Matters (2016-2018)
- Legal 500 US, Intellectual Property: Patent Litigation, International Trade Commission (2016, 2018)
- Legal 500 US, Intellectual Property: Patent Litigation, Full Coverage (2016-2017)
- IAM Patent 1000, Post-Grant Procedures: National (2015-2016)
- IP Law & Business, Named one of the top 50 under 45 (2008)