Haynes and Boone Hires Joseph Matal, Former USPTO Director and Primary Drafter of the America Invents Act

08/25/2020

Joseph Matal, the former Acting Director of the U.S. Patent and Trademark Office (USPTO) and one of the principal drafters of the America Invents Act (AIA), has joined Haynes and Boone, LLP as a Washington, D.C.-based partner in the firm’s Intellectual Property Practice.

Matal brings a wealth of government experience to the firm, having served stints as both the USPTO’s Acting Director and Acting Solicitor. As Acting Solicitor, he defended the agency in intellectual property cases before the U.S. Court of Appeals for the Federal Circuit and U.S. Supreme Court. In his role in the Solicitor’s Office, Matal participated in briefing almost every major case involving Patent Trial and Appeal Board (PTAB) trials that has come before the Federal Circuit, including cases that have defined the Board’s powers and the evidence that it may consider, the content of final decisions, and the burdens and scope of motions to amend. Previously, Matal served in senior legal roles for more than a decade for the U.S. Senate Judiciary Committee. In that capacity, he negotiated and drafted many of the key provisions of the AIA.

“Joe’s role in the development of the AIA, in managing the USPTO, and in defending PTAB trials in the courts, along with the other stops in his distinguished career, has earned him respect across the patent bar, particularly among senior staff of the Patent Office and within the high-tech stakeholder community,” said Haynes and Boone Partner David McCombs, a veteran litigator at the PTAB and Federal Circuit.

Haynes and Boone Managing Partner Tim Powers added: “Joe’s keen understanding of the design of the AIA, and the legal arguments and strategies that are often persuasive in PTAB proceedings, will provide an incredible resource to our clients. We look forward to Joe helping us continue to grow and enhance our IP capabilities across the country.”

In his roles at the USPTO, Matal briefed and argued numerous appeals of patent and trademark decisions before the Federal Circuit, oversaw the management of the USPTO and its 13,000 employees, and advised the U.S. Solicitor General’s Office in key IP cases before the Supreme Court.

“When I was deciding on a law firm to join after leaving government service, I sought advice from the judges and other colleagues in the IP community. Haynes and Boone’s leading role in these proceedings, the depth of its experience, and the quality of its team made it the obvious choice,” Matal said. “I am thrilled to join a firm with such an established and well-regarded Patent Trial practice that represents clients nationally and internationally in some of their most complex and sophisticated matters.”

Haynes and Boone’s Intellectual Property Practice helps clients protect their patents and invalidate others’ claims at the USPTO. These proceedings include inter partes review (IPR), covered business method (CBM) review, post-grant review (PGR), and other proceedings before the PTAB. Firm attorneys have been involved in over 300 IPR and CBM proceedings before the PTAB, most of which are directed to patents in litigation. Haynes and Boone frequently appeared at the Federal Circuit in 2019, having argued 44 cases before the Court.

Haynes and Boone is an international corporate law firm with offices in Texas, New York, California, Charlotte, Chicago, Denver, Washington, D.C., London, Mexico City and Shanghai, providing a full spectrum of legal services in energy, technology, financial services and private equity. With more than 575 lawyers, Haynes and Boone is ranked among the largest U.S.-based firms by The National Law Journal, The American Lawyer and The Lawyer.

The following publications reported on Matal's move to the firm:

Bloomberg Law

ICLG

Intellectual Property Magazine

IP Watchdog

Law360

Reuters

Westlaw Today

World Trademark Review