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Jonathon P. Western

Of Counsel

[email protected]

+1.617.348.1609

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Jonathon is a versatile patent attorney whose practice encompasses US and international patent prosecution and portfolio management, strategic intellectual property counseling, and post-grant proceedings before the USPTO. He works with companies of all sizes, from start-ups to small businesses to Fortune 500 companies. His clients include innovators in a broad spectrum of industries, such as technology, artificial intelligence, semiconductors, automotive, hospitals, and education.

A creative IP strategist, Jonathon advises clients on their patent portfolios and regularly provides patentability, infringement, validity, and freedom to operate opinions. Clients also call on him to provide clearance to market analyses and handle IP due diligence. In addition, Jonathon drafts petitions for inter partes review and oversees cases before the Patent Trial and Appeal Board.

Jonathon has particular experience in drafting and prosecuting patent applications for electrical and computer science–based technologies, such as software, mobile applications, networking, telecommunications, sensors, circuitry, semiconductors, signals, optics, artificial intelligence, and machine learning. He also frequently works on mechanical device patents for automobile industry manufacturers as well as medical device patents for hospitals and universities.

Prior to rejoining Mintz, Jonathon was a partner at a Boston-based patent law firm, where he prosecuted a wide range of patents and provided strategic IP counseling. Earlier in his career, he was an intellectual property associate in the Boston office of another international law firm. Jonathon also previously worked as an intellectual property associate at a law firm in Alexandria, Virginia, and a patent prosecution boutique in Minneapolis.

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New guidance issued by the United States Patent and Trademark Office (USPTO) on patent subject matter eligibility under 35 U.S.C. § 101, focusing on AI and other software-related emerging technologies.

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