Mark Nikolsky is a partner and registered patent attorney focusing on obtaining, licensing, and enforcing Intellectual Property rights, including patents, trademarks, copyrights and trade secrets. He regularly counsels clients on how best to protect their innovations using IP.
A substantial portion of Mark’s practice is devoted to representing clients before the U.S. Patent and Trademark Office (USPTO) to obtain patents covering technologies in the software, electrical, and mechanical fields. Examples of some of the technologies Mark has protected include computer software and hardware, digital and analog systems, optoelectronics, semiconductor fabrication processes, plasma physics devices, telecommunications, distributed computing systems, and other types of technologies. He interacts with clients on a nearly daily basis to draft and refine patent applications and advise on IP protection strategies.
Mark frequently investigates the patent rights of others and prepares opinions including patent freedom-to-operate, invalidity, and patentability opinions. He has participated in litigation proceedings involving intellectual property matters including patent, trademark, and copyright infringement. Additionally, Mark has experience negotiating and drafting business-related agreements including technology licensing, confidentiality, and non-disclosure agreements. Mark is a member of the Association for Computing Machinery (ACM) and the Institute for Electrical and Electronics Engineers (IEEE, and he also gives presentations to small business and educational entities regarding IP protection.
In addition to his patent prosecution and IP counseling practice, Mark has been lead counsel in a number of inter parties review (IPR) and other post-grant review proceedings before the Patent Trial and Appeal Board (PTAB) of the USPTO, successfully challenging the validity of a number of patents in streamlined proceedings under the America Invents Act. Additionally, Mark has successfully argued appeals of PTAB decisions before the U.S. Court of Appeals for the Federal Circuit (CAFC), where he has been lead appellate counsel.