FacultyFaculty/Author Profile
Michael W. O'Neill

Michael W. O'Neill

Dentons US LLP

Washington, DC, USA

A 17-year veteran of the United States Patent and Trademark Office (USPTO), Michael O'Neill brings his seasoned experience as an administrative patent judge for the Board of Patent Appeals and Interferences—the predecessor to the Patent Trial Appeal Board (PTAB)—to Dentons as a member of the Firm’s robust Intellectual Property and Technology practice. 

Michael’s experience derives from his work involving PTAB post-grant proceedings, including inter partes reviews (IPR), transitional covered business methods (CBM), post-grant reviews (PGR) and derivations. He has been involved in numerous post-grant proceedings, representing both petitioners and patent owners. Michael is adept at counseling in-house senior management and chief IP counsel, outside litigation counsel and expert witnesses to develop effective legal strategies. As a judge, he authored more than 300 reported board opinions spanning diverse subject matters. During his judicial appointment, Michael developed a strong background in appeals involving biomedical, mechanical, electrical, chemical and business method technologies.

Michael’s unique skills center largely upon his more than two decades of work in the field, translating to an in-depth knowledge of what it takes to survive as a patentee in today’s competitive market economy. He has leveraged vast IP portfolios for global clients through countless design-arounds, reverse-engineering and strategic licensing. Michael is also comfortable marrying legal risks and rewards together with business objectives, relying on shrewd judgment calls and meticulous skills taught through years of work dissecting complex legal issues. 

Through his experience as a patent judge, and his years at the USPTO, Michael can advise on matters involving patent litigation strategies, validity, patent as well as trademark practice and procedure. He works with lead litigation counsel to draft and review claim charts, invalidity contentions, arguments for claim construction and summary judgment; depose and defend expert witnesses; and address all aspects of document review. He coaches litigation counsel in mock trial and appellate settings to make arguments stronger. Michael also provides expert witness services for USPTO patent practice and procedure, and is available to render his valuable expert services.


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