• EMAIL
  • PRINT
  • PDF
  • Bookmark and Share

Education

  • J.D., Rutgers University School of Law - Newark, 2010
  • B.S., The College of New Jersey, Mechanical Engineering, 2007

Bar Admissions

  • New Jersey
  • U.S. Patent & Trademark Office

Court Admissions

  • U.S. Court of Appeals, Federal Circuit

Memberships & Affiliations

American Society of Mechanical Engineers

Timothy P. Homlish

  • |
Associate
  • T: 973.639.8474
    F: 973.297.3746
    • Four Gateway Center
      100 Mulberry St.
      Newark, NJ 07102

Mr. Homlish is a registered patent attorney in the Intellectual Property/Information Technology practice group at McCarter & English, LLP, and concentrates his practice on intellectual property matters including client counseling, patent procurement, patent portfolio management, enforcement of intellectual property rights, patent litigation support, and post-grant patent challenges. Mr. Homlish has experience in an expansive range of technologies covering the mechanical, electromechanical, electrical, and computer fields, including significant experience with pumps, pumping systems, filters, underwater cleaning devices, valves, power electronics, automation systems, electronic storage devices, photogrammetry, and medical devices.

Much of Mr. Homlish’s practice is centered around representing clients before the United States Patent and Trademark Office in the procurement of patent rights covering their inventions. Mr. Homlish has drafted and prosecuted many utility and design patent applications alike, including the drafting of the specification, drawings, and claims of those applications. During prosecution of a patent application, Mr. Homlish frequently analyzes and responds to Office Actions issued by the United States Patent and Trademark Office, conducts interviews with Examiners, and generally manages the entire process from filing to issuance of a patent. Mr. Homlish’s experience goes beyond the United States, as he also frequently works with foreign counsel in prosecuting foreign patent applications, including European, PCT, and national stage applications.

Additionally, Mr. Homlish has conducted numerous patentability and freedom-to-operate searches, and has prepared opinions based on his analysis of these searches. In this regard, Mr. Homlish has also assessed defense strategies concerning non-infringement and invalidity positions. Mr. Homlish also has experience in patent portfolio monitoring, in which he monitors the patent portfolios of his clients’ competitors to ensure that his clients are always aware of what their competitors are doing in the intellectual property space.

Mr. Homlish has also been involved in over a dozen post grant proceedings, including several Inter Partes Review trials, Inter Partes reexamination proceedings, and Ex Parte reexamination proceedings. In these proceedings, Mr. Homlish takes a hands-on approach where he is substantively involved from start to finish.  This includes analyzing prior art, preparing petitions, drafting expert declarations, responding to adversary’s submissions, handling evidentiary disputes, along with many other vital actions. Mr. Homlish has also provided litigation support for patent litigation matters, including analyzing the claims of asserted patents and preparing invalidity contentions challenging the validity of the asserted patents.

Thus, Mr. Homlish’s patent practice includes a broad range of strategic patent and intellectual property counseling and portfolio management, which spans from the preparation and prosecution of United States and foreign patent applications, to proactive defensive assessments such as freedom-to-operate opinions, and further to the defense of patent infringement through challenging patent validity in post grant proceedings and litigation.

Mr. Homlish has been recognized as a New Jersey Rising Star for 2017 and 2018. Super Lawyers is published by Thomson Reuters. Click here for their methodology. No aspect of this advertisement has been approved by the Supreme Court of New Jersey.