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
Primary 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
Other Practice Experience
- Complex IP Litigation, Inter Partes Conflicts & Mediation and Arbitration
- U.S. Trademark Oppositions
- European Patent and Trademark Oppositions
- Patent Infringement Cases
- Appeals Before the Board of Appeals and Patent Interference of the U.S. Patent and Trademark Office
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
Publications and Presentations
- Eric L. Maschoff, Legal Considerations for the Client Having a Presence on the Internet, Presenter at the Utah State Bar 2001 Annual Convention.
- Eric L. Maschoff, Presenter: 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).
- Eric L. Maschoff, Presenter: GobbledyGook and the Aftermath of KSR: Is the Law of Obviousness any Clearer? Dunes CLE, Current Issues in Patent Law, (October 12, 2007).
- Eric L. Maschoff, Presenter: Inequitable Conduct: What’s an Applicant to Do?, Dunes CLE, Current Issues in Patent Law, (October 9, 2009).
Professional Admissions and Associations
- Utah State Bar
- Registered Patent Attorney
- American Intellectual Property Law Association (AIPLA)
- Institute of Electrical and Electronics Engineers (IEEE)
- Licensing Executives Society (LES)
Eric L. Maschoff Registered Patent Attorneyemaschoff@mabr.com435.252.1370
Profile
Eric’s background as an accomplished computer hardware and software design engineer makes him uniquely qualified to assist his clients in dealing with their intellectual property challenges. His practice is concentrated in strategic counseling, licensing and patent procurement in the computer, electronics, semiconductor, communications, software and Internet fields. He has extensive experience in developing strategies for protecting client technologies, preparing non-infringement opinions, conducting IP due diligence and counseling clients in matters relative to strategic IP portfolio management. He also has litigation experience in a number of complex intellectual property litigation cases. He is a former equity shareholder and former member of the board of directors of a major Salt Lake City-based IP law firm.
His practice involves a wide range of intellectual property matters, including the acquisition and enforcement of patent, trademark, copyright and trade secret rights, computer and multimedia law, and administrative actions before the U.S. Patent and Trademark Office and the U.S. Copyright Office. He also has extensive experience in the preparation of legal opinions on complex patent validity, infringement and enforcement questions on computer, communications and electronics patents. He has also been responsible for various due diligence and clearance investigations relating to new product releases and the transfer of intellectual property assets.
In law school, Eric served as an Intern to the Honorable I. Daniel Stewart, Associate Chief Justice of the Utah Supreme Court. He was a William H. Leary Scholar and a Semifinalist in the Traynor Moot Court Appellate Advocacy Competition. He also was awarded the American Jurisprudence Award in Intellectual Property Law.
He is currently an adjunct professor of law at the University of Utah, S.J. Quinney College of Law teaching classes in patent law and patent drafting and prosecution.
When not working, Eric soaks up the Park City lifestyle by skiing, mountain biking and participating in numerous adventure races and triathlons. He loves listening to Bob Marley and spending time in Moab and Mexico with his family.
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