Paul J. Backofen is an intellectual property specialist with over 20 years in practice. His primary practice is IP prosecution and client counseling, specifically regarding patents. Mr. Backofen works with clients to obtain patent protection on ideas ranging from AI, machine learning, encryption, high-technology military electronics, networks, internet business methods, digital and analog electronics, communication systems, IC manufacture and design, medical devices, microturbines, air bearings, animation techniques, and digital cinema to pre-fabricated wall sections for building construction, fishing lures and musical instruments.
His broad technical experience coupled with his business experience provides clients a valuable perspective for identifying, capturing, protecting and exploiting their intellectual property. Mr. Backofen counsels industry leading organizations how to develop and run formal IP management programs. Some representative clients include Industrial Light and Magic, Lucas Digital, Skywalker Sound, THX, The Wattstopper Inc., Zoll Circulation, Inc., Fakespace Inc.,Fieldpiece Instruments, Inc. and Avion Graphics.
Background & Expertise
As a professional in my field, I’ve had the opportunity to hold a variety of roles in many different firms and companies throughout the years.
I began my legal career at Brunell & Associates, and joined the Intellectual Property department of Irell & Manella LLP for 6 years. I moved to Crockett & Crockett PC to build my practice and bring my experience to smaller clients and startup companies. I have started my own practice to focus on emerging AI and encryption technology.
I began my technical career with Hewlett Packard during college and after graduation worked as an electrical engineer for NASA at the Jet Propulsion Laboratory doing a range of work from designing hardware and communication links to testing and operating the Galileo spacecraft.
Irell & Manella, LLP
1997 - 2003
I focused on U.S. and International patent and trademark prosecution and licensing as well as client counseling to develop IP management strategies. I also provided extensive technical support to litigation teams. Technologies include medical devices, networks, digital and analog electronics, IC manufacture and design, microturbines, air bearings, power generation, transmission and management, animation techniques and software, digital cinema, all mechanical arts.
Representative Matters include:
Industrial Light & Magic / Lucas Digital: established and conducted a formal patent program for U.S. and International protection and licensing, prepared and prosecuted patents.
THX: established a formal patent program and prepared and prosecuted patents.
LucasFilm: established and conducted a formal patent program and coordinated client services, prepared and prosecuted patents.
Capstone Turbine Corporation: conducted formal patent program and managed a U.S. and International patent portfolio of over 300 cases, coordinated work of outside counsel, prepared and prosecuted patents.
The Walt Disney Company: supported in-house counsel and technical staff regarding IP management strategies and prepared and prosecuted patents.
Crockett & Crockett PC
2004 - 2019
I worked to broaden the firm’s patent and trademark practice, focusing on U.S. and International patent and trademark development, prosecution and licensing as well as client counseling to identify and protect their intellectual property. Technologies include medical devices as well as all electronic, software and mechanical arts.
Representative Matters include:
The Watt Stopper, Inc.: developing and prosecuting an extensive IP protection program for a leading industrial electrical supplier.
Fieldpiece Instruments, Inc.: developing, prosecuting and managing an extensive IP protection program for the world leader in hand-held test instruments for HVACR professionals.
THX: conducting a formal patent program for U.S. and International protection and licensing, prepared and prosecuted patents.
Revivant/Zoll Medical: prosecuting and managing an extensive IP protection program that resulted in hundreds of US and international patents.
Jet Propulsion Laboratory
1980 - 1996
Galileo Project Flight Simulation Test Manager
I helped develop automated hardware and test methods; planned and executed the project sequence / hardware test program and maintained the testbed; negotiated test requirements with the science teams, created, conducted and evaluated tests, and documented the results.
Contract Test Engineer
Designed and conducted tests of the Galileo Power and Pyro subsystem and all spacecraft electrical interfaces and documented the results.
Participated in designing the Galileo Power and Pyro subsystem and all spacecraft electrical interfaces; preliminary power subsystem design for Mariner Mark II (Magellen); modified a spacecraft data receiver for electric utility power line communication system; developed the first real-time satellite data link for Woods Hole Oceanographic Institute to monitor a long term ocean floor experiment.
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