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Michael Dunnam
Areas of Practice
  • Electrical & Computers
  • Mechanical & Electromechanical
  • Software & E-Commerce
  • Medical Devices
IP Services
  • Acquisition Due Diligence
  • Foreign Rights
  • Freedom To Operate
  • Licensing
  • Opinions
  • Patent Prosecution
  • Portfolio Management & Analysis
Overview
Education
Bar Admissions & Associations
Speaking Engagements
Representative Patents & Publications
Overview
Overview

Michael Dunnam is a registered patent attorney for Schwegman Lundberg & Woessner. Michael’s professional activities include management of intellectual property matters for foreign and domestic clients, including drafting hundreds and prosecuting thousands of patent applications in a wide variety of electronic, software, electrical, and mechanical arts; conducting numerous infringement and validity studies; participating in all phases of litigation except trial; preparing licensing and joint venture agreements; providing counseling regarding software trademark and copyrights; providing business counseling and strategic planning in the intellectual property area to startup technology companies; conducting patent due diligence and strategic planning; and performing strategic intellectual property portfolio management.

Michael’s representative arts include telephony, audio/video, signal processing, computer hardware and software, Internet, computer graphics, magnetic resonance imaging, ultrasound, medical electronics, wireless power systems, laser optics, RFID, electro-mechanical systems, circuits, compressors, and a variety of business method technologies.

Michael has served as an adjunct professor at the Law School of the University of Pennsylvania in the Detkin Intellectual Property Law Clinic since 2015 and has taught in the Advanced Patent Prosecution Workshop at the Practising Law Institute since 2012. He also served as an adjunct professor at Temple University in the Beasley School of Law from 2012-2016 and was a guest lecturer in the Detkin Intellectual Property Law Clinic from 2012-2014.

Education
Education

The National Law Center of the George Washington University
Washington, D.C., 1989
J.D. (Intellectual Property Law Emphasis)

Brown University
Providence, Rhode Island, 1984
B.S. Electrical Engineering

Bar Admissions & Associations
Bar Admissions & Associations

Bar Admissions
U.S. Patent and Trademark Office, 1987
Commonwealth of Pennsylvania, 1989
Court of Appeals, Federal Circuit, 1990
Eastern District of Pennsylvania, 1990

Associations
American Intellectual Property Law Association, 1989-present

Member, Electronics and Computer Law Committee (ECLC), 1989-present

Chair, 2014-2016

Vice-Chair, 2012-2014

Patent-Eligible Subject Matter Task Force, 2014-2017

Chair for Partnering in Patents Program with USPTO, 2003-2005, 2009-2012

Co-chair of Technology and Business Development Subcommittee, 1999-2002, including editing/contributing to Business Method Primer Prepared for AIPLA Spring 2001 Meeting

Chair of Patents Subcommittee, 2002-2005; co-chair 2009-2012, including editing/contributing to Interview Best Practices document prepared jointly with USPTO

Co-Chair of AIPLA Electronic/Computer Law Road Show 2006, 2008

Chair of AIPLA Advanced Computer/Electronic Patent Practice Seminar, 2006

Co-Chair of AIPLA Computer/Electronic Patent Law Summit, 2010-2014, 2017

Member, IP in Japan Subcommittee

Member, AIPLA delegation to Japan 2010-2011, 2013-2014, 2016

Coordinator of World IP Day in Philadelphia, 2017

 

Philadelphia Intellectual Property Law Association, 1989-present

Member, Computer Law Section 1989-present

Chair, Computer Law Section, 1997-1999

Member, Board of Directors, 2002-2004

Representative to JPO Liaison Council, 2014-present

 

Licensing Executive Society (Philadelphia Chapter), 2008-present

 

International Technology Law Association, 1990-2009

Speaking Engagements
Speaking Engagements

Philadelphia Entrepreneurship Day, 2000

AIPLA Spring Meeting, 2000, on Business Method Patents

Speaker, AIPLA Advanced Computer/Electronic Patent Practice Seminar, 2000, on Counseling Startup Companies

Guest Speaker in e-Commerce class at Fox Business School at Temple University, 2001

AIPLA Spring Meeting, 2001 on Business Method Patents

Partnering in Patents Program with USPTO, 2001, on Pet Peeves between bar and USPTO

AIPLA Advanced Computer/Electronic Patent Practice Seminar, 2002 on drafting and enforcing business method, software and e-commerce patents

Partnering in Patents Program with USPTO, 2002 on Pet Peeves between bar and USPTO

AIPLA Annual Meeting, 2004 on responding to the difficult obviousness rejection

Guest Speaker in Entrepreneurship Class at Temple University, 2000-2005

American Conference Institute’s Corporate Counsel’s Guide to Software
Patents, 2006, on patentable subject matter for software patents

Moderator and Program Chair, AIPLA Advanced Computer/Electronic Patent Practice Seminar, 2006

Testified as patent expert witness for plaintiff in Checkpoint Systems, Inc. v. All-Tag Security S.A. et al., Civil Action No. 01-CV-2223 (E.D. Pa), Feb. 2007.

AUTM Annual Meeting, 2007, on Patent Due Diligence

AIPLA Annual Meeting, 2008 plenary session on In Re Bilski

Moderator, LES Annual Meeting, 2008, on Patent Reform

AIPLA Annual Meeting, 2009 IP in Japan Committee meeting, on Patentable Subject Matter

Inequitable Conduct issues for Patent Practitioners, PIPLA monthly meeting, March 2010

AIPLA Mid-Winter Meeting, 2010 IP in Japan Committee meeting, on Compact Prosecution

Member of 2010 AIPLA delegation, before JPAA in Tokyo, Japan, on Compact Prosecution

AIPLA Mid-Winter Meeting, 2011 plenary session on In Re Bilski

Member of 2011 AIPLA delegation, before JPAA in Tokyo, Japan, on Amicus Briefs

Member of 2013 AIPLA delegation, before JPAA in Tokyo and Osaka, Japan, on Patentable Subject Matter

Organizer/Moderator, 2013 Patent Law Summit, San Jose, CA, on building and enforcing international patent portfolios

Member of 2014 AIPLA delegation, before JPAA in Tokyo and Osaka, Japan, on Patentable Subject Matter

AIPLA Annual Meeting, 2014 IP in Japan Committee meeting, on Patent-Eligible Subject Matter

Moderator of 2015 ECLC meeting at AIPLA annual meeting on patent-eligible subject matter in US, China, Canada, and Europe

Member of 2016 AIPLA delegation, before JPAA in Tokyo and Osaka, Japan, on Functional Patent Claim

Japanese Patent Office Liaison Council Meeting, June 2014, on CLS Bank v. Alice

 Japanese Patent Office Liaison Council Meeting, June 2016, on Functional Patent Claims

Representative Patents & Publications
Representative Patents & Publications

Representative Patents

4,794,838
Constantly changing polyphonic pitch controller

5,054,489
Magnetic resonance imaging using spatial modulation of magnetization

5,790,837
Method and system for device virtualization based on an interrupt request in a dos-based environment

6,230,521
Method of recycling batches of mixed color cullet into amber, green, or flint glass with selected properties

6,442,370
System and method for computer-based test creation

7,181,493
Platform independent model-based framework for exchanging information in the justice system

8,686,727
CEST MRI methods for imaging of metabolites and the use of same as biomarkers

8,942,659
Method for selecting state of a reconfigurable antenna in a communication system via machine learning

9,754,717
Method of and apparatus for generating an adjustable reactance

2017/0116373
Data Command Center Visual Display System

Publications

Board of Editors of American Lawyer Media’s Advising Start-Up and Emerging Companies Newsletter, 2000-2003,

Article on Business Method Patents in Feb. 2002 American Lawyer Media’s Advising Start-Up and Emerging Companies Newsletter

Article on Patent Due Diligence submitted Mar. 2003 American Lawyer Media’s Advising Start-Up and Emerging Companies Newsletter

“Recognizing Tech Diamonds in the Rough,” Philadelphia Business Journal, March 28, 2003

“Responding to the ‘Difficult’ Obviousness Rejection,” presented at AIPLA Annual Meeting, 2004

“PTO Breaks the ‘State Street Bank’ Test For Statutory Subject Matter With a New ‘Technological Arts’ Requirement,” Journal of Washington State Patent Law Association, Feb. 2005

“Eligible Subject Matter After In re Bilski,” presented at AIPLA Annual Meeting 2008

“Successfully Prosecuting Patent Applications in the USPTO,” Patents in the USA, Guide for Japanese Executives, published as supplement to Intellectual Asset Management magazine, 2008

“Life After Bilski: Has Bilski Provided the Clarity We Had All Hoped For?” presented at AIPLA Mid-Winter Meeting, 2011