Penina Michlin

Ms. Michlin’s legal practice focuses on Intellectual Property matters, Commercial Transactions and Business and Corporate Law.


Ms. Michlin was admitted to practice before the U.S. patent office in 2008 and has extensive experience prosecuting patents and managing international patent portfolios.

Biography

Ms. Michlin’s patent prosecution practice currently focuses in the areas of mechanical engineering and computer technology. She has a strong background in a broad range of technologies from oil and gas technologies such as submersible pumps and offshore natural gas to electronic gaming. In addition to prosecuting patents, Ms. Michlin represents clients in reexamination proceedings and before the Patent Trial and Appeal Board, and provides opinions related to invention novelty, freedom to practice and patent validity.

Ms. Michlin’s patent infringement litigation practice focuses primarily on defense in patent troll infringement litigation. Ms. Michlin specializes in defense in the financial services industry as well as other targets of patent troll campaigns. Ms. Michlin’s unique technical background, expertise and understanding of patent strength, scope and interpretation provides a unique perspective to resolve litigations quickly and minimize losses.

Ms. Michlin has extensive experience with trademark prosecution and the management of international trademark portfolios. Ms. Michlin provides trademark availability opinions, assistance with branding issues, as well as representation with respect to opposition proceedings before the Trademark Trial and Appeal Board. Ms. Michlin also represents clients in trademark litigations in federal court, including priority and infringement disputes.

In addition, Ms. Michlin provides advice regarding intellectual property licenses, and the treatment of intellectual property in commercial transactions and entity formations.

Ms. Michlin also has experience working with banks, PE Funds, and major international companies in the areas of M&A, entity formation and other corporate and business functions. Ms. Michlin is also a member of the MIT Educational Council.

Undergraduate:

Massachusetts Institute of Technology, Materials Science and Engineering, Physics, 2000


Law:

University of California, Berkeley – Boalt Hall, J.D., 2005

California, 2005

Oklahoma, 2007

US Patent Office, 2008

Debbie Stopforth
dstopforth@fdlaw.com