Eric L. Maschoff

Registered Patent Attorney Shareholder

Eric L. Maschoff

Office: 435.252.1360

Direct: 435.252.1370

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Eric L. Maschoff

Registered Patent Attorney Shareholder

Eric specializes in building large intellectual property portfolios that advance his clients’ business strategies, protect their investments in research and development, and enhance their competitive position in the marketplace.  A trusted advisor to his clients, he is highly responsive and valued for his thoughtful, practical, and business-savvy insight.

Appreciated for his honesty and easy-going communication style, Eric pays considerable attention to delivering what his clients need by taking the time to truly listen to their specific goals.  As a result, businesses repeatedly turn to him because he consistently delivers workable legal and practical business solutions to even the most complicated intellectual property challenges.  Eric believes “clients are looking for real-time advice that is presented quickly, succinctly, and without a lot of formality.”

With his background as a computer hardware and software design engineer, Eric is a true problem solver.  He strives to keep his clients ahead of the curve when it comes to changes in the law, new trends in technology, and shifting economic conditions.

Eric provides his clients with advice on the full spectrum of patent portfolio management and strategy, including patent prosecution and drafting; domestic and global patent portfolio management; counseling on infringement and validity, freedom-to-operate, patentability analysis, and due diligence investigations; development of design around strategies; and prior art search and analysis.   When partnering is the solution, he has negotiated hundreds of intellectual property related agreements, including licenses, joint development agreements, acquisitions and divestitures with and for Fortune 100 companies, universities, start-ups and individual inventors.

Eric’s practice also involves a wide range of other intellectual property matters, including the acquisition and enforcement of patent, trademark, copyright and trade secret rights, and representing clients in connection with administrative actions before the U.S. Patent and Trademark Office and U.S. Copyright Office.

His industry-specific experience is extensive and includes the highly specialized electromechanical and semiconductor fields, fiber optics, lasers, optical networking systems, X-ray devices and equipment, telecommunications, mechanical engineering, as well as computer, internet, and multimedia law.

In 2011, Eric co-founded Maschoff Brennan and served as its Managing Shareholder for the next eight years.  His leadership and vision were instrumental in growing the firm from 8 to over 50 attorneys, with four offices in the technology-focused regions of Utah and California.

A strong believer in giving back to the community he lives and works in, Eric has served as an adjunct law professor at the University of Utah, S.J. Quinney College of Law for over 20 years, where he teaches courses in patent law and patent drafting and prosecution.

Outside of work, Eric enjoys the Park City lifestyle by skiing, mountain biking, and participating in adventure races and triathlons. He loves listening to Bob Marley and spending time in Moab and Mexico with his family.

  • Education
    • J.D., Order of the Coif, University of Utah, S.J. Quinney College of Law, 1993
    • B.S., New Mexico State University, Electrical and Computer Engineering, 1984
  • Practice Focus
    • Patent Prosecution
    • Trademark Prosecution
    • Copyright Registrations
    • Licensing, Other Transactional Work & Client Counseling
    • Employment Agreements & Invention Ownership
    • Assignments of Intellectual Property Rights
    • Patentability Opinions
    • Trademark Searches and Clearance Opinions
    • Patent Infringement and Validity Opinions
    • Due Diligence Investigations of IP Portfolios During Acquisition or Merger Transactions
    • Defensive Opinions of Non-infringement and Design Around Strategies
  • Technical Experience

     

    • Electronics & Electrical Engineering
    • Electrical & Electromechanical Systems
    • Semiconductors
    • Telecommunications and Fiber Optics
    • Consumer Electronics
    • Computer Systems, Software & E-Commerce
    • Business Methods & Information Technology
    • E-Commerce Technologies and Business Methods
    • Internet Technologies
    • Physics/Optics
    • X-Ray Devices and Equipment
    • Optical Networking Systems and Components
    • Active and Passive Optical components
    • Lasers and related Optical components
    • Mechanics & Mechanical Engineering
    • Manufacturing Equipment
    • Medical and Dental Devices
  • Professional Admissions & Associations
    • Utah State Bar
    • Registered Patent Attorney
    • American Intellectual Property Law Association (AIPLA)
    • Institute of Electrical and Electronics Engineers (IEEE)
    • Licensing Executives Society (LES)
    • Adjunct Professor, S.J. Quinney College of Law, University of Utah
  • Publications, Speaking Engagements & Presentations
    • “Developing an IP Strategy? Focus on Value,” The Enterprise (August 26, 2020)
    • “Pandemic Pause: Intellectual Property Strategies During a Unique Business Environment,”  The Enterprise (May 11-17, 2020)
    • “Best Practices for Employee Confidentiality and Proprietary Rights Agreements,”  The Enterprise (February 17-23, 2020)
    • “Inequitable Conduct: What’s an Applicant to Do?,” Dunes CLE, Current Issues in Patent Law (October 9, 2009)
    • “GobbledyGook and the Aftermath of KSR: Is the Law of Obviousness any Clearer?,” Dunes CLE, Current Issues in Patent Law (October 12, 2007)
    • “Non-Obviousness Reform and the Propriety of the Federal Circuit’s ‘Teaching, Suggestion, Motivation’ Test,” Dunes CLE, Current Issues in Patent Law (August 25, 2006)
    • “Legal Considerations for the Client Having a Presence on the Internet,” Presenter,  Utah State Bar Annual Convention (2001)
  • Awards & Recognition
    • Chambers USA, Intellectual Property (2016 – 2022)
    • U.S. News & World Report’s Best Lawyers, Patent Law (2008 – 2023)
      • Lawyer of the Year; Patent Law (2015)
    • Mountain States Super Lawyers (2012 – 2022)
    • Utah Business Magazine’s Legal Elite (2013 – 2022)
    • Managing Intellectual Property Magazine’s IP Star; Patent (2018 – 2022)

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