FacultyFaculty/Author Profile
Stephen G. Kunin

Stephen G. Kunin

Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.

Alexandria, VA, USA


STEPHEN G. KUNIN is the former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and Trademark Office.  He has more than 43 years of expertise in intellectual property rights protection and 24 years of organizational management and leadership experience.  He was appointed to his former position in March 2000 and has served in a similar capacity since November 1994, under the position's prior title, "Deputy Assistant Commissioner for Patent Policy and Projects."  Previously, beginning in July 1989, Mr. Kunin served as Deputy Assistant Commissioner for Patents.  He participated in the establishment of patent policy for the various Patent Organizations under the Commissioner for Patents, including changes in patent practice, revision of rules of practice and procedures, establishment of examining priorities and classification of technological arts, and oversaw the operations of the Office of Patent Legal Administration, Patent Cooperation Treaty Legal Administration, and the Office of Petitions.  Additionally, in January 1993, Mr. Kunin was designated by the Secretary of Commerce to perform the functions of the Assistant Commissioner for Patents on an acting basis until a new Assistant Commissioner for Patents was appointed in 1994.

Mr. Kunin joined the Patent and Trademark Office (PTO) as a patent examiner in June of 1970. In March of 1977, he became a Senior Examiner in a technology of master's level complexity.  He became Director of the Manufacturing Group in May of 1983.  When a new Electrical Communications examining group (Group 260) was formed in April of 1984, he became its first Group Director.

Mr. Kunin assumed many leadership roles for the Office, including chairing the Patent Examiner Evaluation Board and the Patent Academy Curriculum Committee.  Among his responsibilities, in addition to overseeing the Patent Examination Policy activities, he served on the USPTO Management Council, the USPTO Committee on Discipline, and the USPTO Executive Committee.  He also coordinated several of the Trilateral Projects under the jurisdiction of the Commissioner for Patents.  He has been a guest lecturer at a number of prestigious law schools.

Mr. Kunin, as a Partner, serves as a patent consultant who advises clients on patent prosecution and policy matters.  He also serves as an expert witness on patent law, policy, practice and procedure.  He chairs the firm’s Contested Proceedings and General Counsel Committees.  His team of Post-Grant Practice Partners maintains the firm’s Patents Post Grant Legal Blog www.patentspostgrant.com to share insights and commentary on the complex array of existing and proposed post-grant issues, observe trends, practice tips and news relating to patent reexamination, reissue, and USPTO administrative trials.  In February 2011, he was elected by his law partners to the firm’s Management Committee.  He also serves as Deputy Managing Partner and General Counsel of the law firm.

Mr. Kunin also now serves as the Intellectual Property L.L.M. and J.D. Programs Director at the George Mason School of Law where he is an adjunct professor who teaches patent law and intellectual property law classes. He is frequently sought out to lecture to external groups on USPTO administrative trials and USPTO patent prosecution practice.

Education:

Mr. Kunin graduated with honors from Washington University in May of 1970 with a B.S. degree in Electrical Engineering.  He attended the National Law Center of the George Washington University, receiving his Juris Doctor degree in law with honors in May of 1975.  He is a graduate of the Harvard University Kennedy School of Government SMG Program.

Awards:

Mr. Kunin received numerous awards during his career at the USPTO, including four Gold Medals, four Silver Medals and a Bronze medal from the Department of Commerce, a USPTO Career Achievement Award and the Vice President's Reinventing Government Hammer Award.  In 2001 he was named by Intellectual Property Today magazine as one of the most influential people in IP law and was the recipient of the Meritorious Executive Presidential Rank Award.  In the February 2002 issue of the Practicing Law Company's magazine "Global Counsel" he was named as one of the most inspiring regulators in the federal government.  In December 2004 he received the IPO Leadership Award. In November 2007 he received the 34th Annual Dr. Joseph Rossman Memorial Award from the Journal of the U.S. Patent and Trademark Office Society.  In June 2008 he was ranked by Chambers USA as one of the top Intellectual Property Lawyers.  In August 2009 he was selected by his peers for inclusion in the 2010 edition of The Best Lawyers in America® in the specialty of Intellectual Property Law.  In August 2010 he was selected by his peers for inclusion in the 2011 edition of The Best Lawyers in America® in the specialty of Intellectual Property Law.  In October 2010 he was named in Washington D.C.'s Best Lawyer's List.  In 2011 he was listed as the Top Patent Prosecutor in the Patent Research Review.  In March 2011 he was selected by his peers for inclusion in the Best Lawyers in America® for 2011 in the area of Patent Law.  He has been recognized in The Legal 500 for 2011 as one of the top patent lawyers.  In August 2011 he was selected by his peers for inclusion in the Best Lawyers in America® for 2012 in the area of Patent Law.  He has been named as one of the areas top patent attorneys in the 2012 listing of the Legal 500.  He is recognized as a key intellectual property attorney in the state of Virginia in the 2012 Chambers USA.  He is recommended in the IAM Patent 1000 as an individual practitioner in post-grant procedures.  In July 2012 he was nominated by his peers and endorsed by the AIPLA Board of Directors to become a member of the AIPLA Fellows.  In August 2012 has was selected by his peers for inclusion in the Best Lawyers in America® for 2013 in the area of Patent Law.  In February 2013 Mr. Kunin was awarded the 2012 P.J. Federico Memorial Award by the U.S. Patent and Trademark Office Society.  In March 2013 he was selected by his peers for inclusion in the 2013 Edition of The Best Lawyers in America.  He is listed as ranked Virginia Intellectual Property attorney in the 2013 edition of Chambers USA.  He is listed in the 2013 IAM 1000 national and DC Metro ranking. He is listed as a leading IP lawyer in the United States in the 2013 IP Stars.  He has been selected by his peers to be included in the 20th Edition of the 2014 The Best Lawyers in America in the practice area of Patent Law.

Memberships:

Mr. Kunin has served on the Editorial Board of the AIPLA Quarterly Law Journal and as an Advisory Committee Member for CASRIP (The Center for the Advanced Studies and Research on Intellectual Property) at the University of Washington’s School of Law in Seattle, Washington.  He was a Vice-Chair of the IPO U.S. Patent Practice Committee (2005-2008) and was the Vice-Chair of the IPO Patent Law Committee (2011), a former member of the AIPLA’s Industry Trilateral Working Group and a member of the Community Patent Review Advisory Board.  He was a member of the IP Law 360 Editorial Advisory Board.  He is also a member of the LES (Licensing Executives Society), the PTOS (Patent and Trademark Office Society), the AIPLA (American Intellectual Property Law Association), the Federal Circuit Bar Association, the ABA (American Bar Association) and the Giles S. Rich American Inn of Court.  He is also a member of the Virginia State Bar and the bars of the Court of Appeals for the Federal Circuit and Supreme Court of the United States.  He is registered to practice as a patent attorney before the U.S. Patent and Trademark Office.  He was the Vice Chair of the AIPLA Patent Cooperation Treaty Committee and currently serves as a member of the AIA Strategic Task Force.  He has been named as the IPO Patent Law Committee liaison to the IPO Post-Grant Proceedings Committee.

Publications:

  • “Petitions Practice Within the Patent and Trademark Office on Patent Matters,” Journal of the Patent and Trademark Office Society, August 1991
  • “Patentability of Computer Program Related Inventions in the United States,” Journal of Patent and Trademark Office Society, March 1994, Nov. 1995 and Sept. 1999
  • “Intellectual Property: The Engine for Healthcare Changes in the New Millennium,” Journal of Commercial Biotechnology, vol. 5 no. 2, Autumn 1998
  • “Written Description Guidelines and Utility Guidelines,” Journal of Patent and Trademark Society, February 2000
  • “ReachThrough Claims in the Age of Biotechnology,” American University Law Review, Vol. 51, No. 4, 2002
  • “Workshop on the Future Public Policy and Ethical Issues Facing the Biotechnology Industry,” Journal of Patent and Trademark Society, July 2004
  • “The Metamorphosis of Inter Partes Reexamination,” Berkeley Technology Law Journal, Vol. 19, No. 3, Summer 2004
  • “The Reissue Recapture Doctrine: Its Place Among the Patent Laws,” Cardoza Arts & Entertainment Law Journal, Vol. 22, No.2, 2004.
  • “The CREATE Act: A Solution to the Secret Prior Art Problems Caused by the OddzOn Products Inc. Case,” Intellectual Property Today, Volume 12, No. 4, April 2005
  • “Patent Eligibility of Signal Claims,” Journal of the Patent and Trademark Office Society, December 2005
  • “Maximizing Your Success With the Examiner,” Electronic and Software Patents: Law and Practice, 2nd Ed., The Bureau of National Affairs, Inc., Washington, D.C., December 2005
  • Stephen G. Kunin & Andrew K. Beverina, Commentary, “KSR’s Effect on Patent Law,” 106 Mich. L. Rev. First Impressions 50 (2007, http://www.michiganlawreview.org/firstimpressions/vol106/kuninbeverina.pdf.
  • The Honorable Gerald J. Mossinghoff & Stephen G. Kunin, White Paper, “The Need for Consensus on Patent Reform,” BNA’s Patent, Trademark & Copyright Journal, Volume 75, Number 1853, ISSN 15224325, February 1, 2008, full text at http://www.bna.com/ptcj/Jan30WhitePaper.pdf.
  • Stephen G. Kunin and Philippe J.C. Signore, “A Comparative Analysis of the Inventive Step Standard in the European and Japanese Patent Offices from a US Perspective,” IP Litigator, Volume 14, Number 1, January/February 2008
  •  Stephen Kunin and Kurt Berger, “The Patent Subject Matter Eligibility Tug of War: Why the PTO Has It Wrong on Section 101”, BNA’s Patent, Trademark & Copyright Journal, Volume 76, Number 1890, October 31, 2008, ISSN 15224325
  •  “U.S. Chamber of Commerce Provides Detailed Recommendations to New Administration Regarding USPTO”, January 8, 2009, full text at http://www.patentdocs.org/2009/01/uschamberofcommerceprovidesdetailedrecommendationstonewadministrationregardinguspto.html
  •  The Honorable Gerald J. Mossinghoff & Stephen G. Kunin, “Improving the Effectiveness of the U.S. Patent and Trademark Office,” Science Progress, January 12, 2009, full text at http://www.scienceprogress.org/2009/01/improvingtheeffectivenessofuspto/
  •  Jonathan W. Parthum, Philippe J.C. Signore & Stephen G. Kunin, “Patent Reform:  The ‘NeverPass’ Reform?,” 5th Annual Patent Law Institute (March 2122, 2011/San Francisco)
  •  Jonathan W. Parthum, Philippe J.C. Signore & Stephen G. Kunin, “Keeping Up With Patent Reform in 2011”, Aspen Publishers, The Computer & Internet Lawyer, Volume 28, Number 7, July 201

*Mr. Kunin became the IPP Director in January 2005.

Stephen G. Kunin is associated with the following items:
Treatise  Treatise Post-Grant Proceedings Before the Patent Trial and Appeal Board
Treatise Chapters  Treatise Chapters Prefiling Considerations - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Patent Owner Preliminary Response - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Discovery - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Patent Owner Discovery Period, Response and Proposed Amendments - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Transitional Program for Covered Business Method Patents - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Patent Owner Supplemental Discovery and Reply to Opposition to Proposed Amendments - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Index - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Introduction - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Petition for Inter Partes Review - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Institution of Inter Partes Review - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Sanctions - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Parallel Litigation - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Petitioner Discovery Period, Reply and Opposition to Proposed Amendments - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Foreword - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Appeals to the Federal Circuit - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Leahy-Smith America Invents Act - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Table of Contents - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Final Written Decision and Rehearing Requests - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Preview of Post-Grant Review Procedures - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Hearing - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
Motions - Post-Grant Proceedings Before the Patent Trial and Appeal Board , Monday, June 24, 2013
CHB Chapters  CHB Chapters Part 1—Rules of Practice in Patent Cases (October 7, 2013) - Patent Law Institute (8th Annual) , Monday, February 03, 2014
Web Segment  Web Segment Breakout Sessions IV: Litigation, Prosecution, Strategic/Transctional - Patent Law Institute 2014 (8th Annual) , Thursday, February 06, 2014
MP3 Audio  MP3 Audio 8th Annual Patent Law Institute - Breakout Sessions IV: Litigation, Prosecution, Strategic/Transctional - Breakout Sessions IV: Litigation, Prosecution, Strategic/Transctional , Thursday, February 06, 2014
MP4 - Mobile Video Seg  MP4 - Mobile Video Seg 8th Annual Patent Law Institute - Breakout Sessions IV: Litigation, Prosecution, Strategic/Transctional - Breakout Sessions IV: Litigation, Prosecution, Strategic/Transctional , Thursday, February 06, 2014
On-Demand Web Programs  On-Demand Web Programs Patent Law Institute 2014 (8th Annual) , Monday, February 17, 2014 , New York, NY
Live Seminar  Live Seminar Patent Law Institute (9th Annual) , Monday, February 02, 2015 , New York, NY
Patent Law Institute (8th Annual) , Monday, February 03, 2014 , New York, NY
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