David M. Longo, Ph.D. is a partner in the firm’s Electrical Patent Prosecution practice group. His legal experience covers all aspects of client counseling, patent portfolio development and management, prosecution, reissue applications, reexamination proceedings, appeals, opinions of counsel, due diligence, pre-litigation counseling, and license negotiations. He works actively with international clients to develop and grow their utility and design patent portfolios.
Dr. Longo’s technical experience bridges the electrical engineering and materials science fields, particularly in the areas of semiconductor materials and devices, semiconductor processing and characterization, thin film deposition and analysis, photovoltaics, nanotechnology, nanoprinting, advanced materials, alternative lithography technologies, fiber optics/optoelectronics, medical devices, microelectromechanical systems (MEMS), scanning electron microscopy (SEM), transmission electron microscopy (TEM), atomic force microscopy (AFM), and focused ion beam (FIB) microscopy and micromachining.
His Ph.D. dissertation, entitled “Development of a Deep Submicron Printing Technology,” significantly contributed to a Defense Advanced Research Projects Agency (DARPA) project for development of a nanoscale printing technology for electronic materials and devices applicable to both planar and curved surfaces. Other academic research involved thin film deposition and analysis, using FIB microscopy along with analytical and high resolution TEM to study nanoscale thin films and diffusion barriers on single-crystal silicon substrates.
Dr. Longo has written numerous technical and legal publications, and has lectured on developments in U.S. patent law and the patenting process at technical meetings for the American Chemical Society (ACS), Materials Research Society (MRS), and the American Society of Mechanical Engineers (ASME), as well as at nanotech consultancy conferences in Spain and Egypt, and at client meetings in Japan and the U.S. He has also presented several talks on alternative nanoscale printing technologies at technical conferences and seminars as part of his Ph.D. research.
Prior to joining the firm, Dr. Longo worked for another law firm primarily in the areas of patent counseling and prosecution, and worked full time as a patent agent while attending law school.
- George Washington University Law School (J.D.)
- University of Virginia (Ph.D.)
- Materials Science & Engineering
- University of Virginia (M.S.)
- Materials Science & Engineering
- University of Scranton (B.S.)
- Physics & Philosophy
- District of Columbia
- New Jersey
- U.S. Patent and Trademark Office
- Eastern District of Virginia
- Court of Appeals for the Federal Circuit
- Court of Appeals for Veterans Claims
- U.S. Supreme Court
- Trademark & Designs
- Counseling & Strategic Advice
- Utility Patent Procurement & Prosecution
- IP Transactions
- American Intellectual Property Law Association (AIPLA)
- AIPLA IP Practice in Japan Committee
- U.S. Bar – Japan Patent Office Liaison Council (represent Virginia Bar IP Section)
- Intellectual Property Owners Association, Patent Law (U.S.) Committee Member, Patent Office Practice (U.S.)
- Materials Research Society (MRS)
- Institute of Electrical and Electronics Engineers (IEEE)
- Second Prize in Nathan Burkan Memorial Paper Competition, sponsored by A.S.C.A.P., for paper entitled “Using the D.M.C.A. Anticircumvention Provisions to Avoid § 102(b) of the Copyright Act and the Limited Times Clause in Art. I, § 8 of the U.S. Constitution” (2004)
- Received five awards between 1998 and 2000 for research and scholastic activities while a graduate student.
Speeches & Lectures
- “Broadening Reissue Practice: the "Staats" Show a Home Run for "Doll",” Virginia MCLE seminar, Mar. 21, 2012, Washington, DC
- “Conducting USPTO Examiner Interviews,” Virginia MCLE seminar, Jan. 26, 2012, Reston, VA
- “U.S. Patent Reform: America Invents Act Highlights for Japanese Clients with Focus on Prosecution,” lecture for Japanese clients and practitioners, Nov. 14-18, 2011, Tokyo, Japan
- “Increasing Allowance Rate at the USPTO and Recent Applications of the KSR Decision at the Federal Circuit,” Joint 66th Southwest & 62nd Southeastern Regional Meeting of the American Chemical Society, Dec. 1, 2010, New Orleans, LA (Invited Speaker for Symposium on “Patent Law Developments”)
- “Recent Updates in U.S. Patent Practice and Case Law,” lecture for Japanese clients and practitioners, Jun. 14-18, 2010, Tokyo, Japan
- “Collaboration Between Industry & Academia: Intellectual Property as a Foundation for Business Growth,” Nanotech Business Summit, Dec. 6, 2009, Cairo, Egypt (Invited Speaker and Session Chair on engineered nanomaterials and fund raising issues in an evolving regulatory and economic environment)
- “The Importance of Opinions of Counsel,” 61st Southeastern Regional Meeting of the American Chemical Society (SERMACS), Oct. 21, 2009, San Juan, Puerto Rico (Invited Speaker for Symposium on “Patent Law Developments”)
- “USPTO Examiner Interview Practice (Making It Work for You),” Virginia MCLE seminar, Jul. 15, 2009, Reston, VA
- “U.S. Patent Specification and Claim Drafting,” lecture for Japanese clients and practitioners, May 18-22, 2009, Tokyo, Japan
- “The Nanotechnology Dilemma: the Intersection of Nanotechnology and Obviousness,” Nanotech Insight 2009, Apr. 1, 2009, Barcelona, Spain (Invited Keynote Speaker)
- “What is Obvious? A Review of Recent Cases and Tips for Prosecuting Patent Applications,” 60th Southeastern Regional Meeting of the American Chemical Society (SERMACS), Nov. 12, 2008, Nashville, TN (Invited Speaker for Symposium on “Patent Law Developments”)
- “Inequitable Conduct,” lecture for Japanese clients and practitioners, Oct. 27-31, 2008, Tokyo, Japan
- “Practical Tips for Prosecuting Patent Applications and Recent Developments in U.S. Patent Law,” Materials Science & Technology 2008, Oct. 6, 2008, Pittsburgh, PA (Invited)
- “What is Obvious? Nanotechnology and Current Case Law,” NanoBiotech 2008, Sep. 15, 2008, Troy, NY (Invited Speaker)
- “Recent Application of KSR v. Teleflex at the Board of Patent Appeals & Interferences and the Court of Appeals for the Federal Circuit,” lecture for Japanese clients and practitioners, May 26-30, 2008, Tokyo, Japan
- “Obvious Is Obvious – Or Is It? The Supreme Court Speaks in KSR v. Teleflex,” 59th Southeastern Regional Meeting of the American Chemical Society (SERMACS), Oct. 24, 2007, Greenville, SC (Invited Speaker for Symposium on “Patent Law in the Age of Nanoscience”)
- “Prosecution Strategies & Information Requirements under the New USPTO Rules,” lecture for Japanese clients and practitioners, Oct. 8-12, 2007, Tokyo and Yokohama, Japan
- “Big Changes in U.S. Patent Practice,” lecture for Japanese clients and practitioners, Jun. 11-15, 2007, Tokyo, Japan
- “Protecting Your Hard Work and Discoveries with Patents,” American Society of Mechanical Engineers 2003 International Mechanical Engineering Congress and RD&D Expo, Nov. 20, 2003, Washington, DC (Panel Presentation: Current Trends and Strategies for Managing and Protecting Intellectual Property)
- “Protecting Your Hard Work and Discoveries with Patents,” Materials Research Society Spring 2003 Meeting, Apr. 24, 2003, San Francisco, CA. (Invited “Symposium X” Talk)
- “Single and Multiple-Level Microcontact Printing Progress and Challenges,” DARPA MLP Program Review, Mar. 13, 2001, Charlottesville, VA
- “Direct Focused Ion Beam Writing of Printheads for Pattern Transfer Utilizing Microcontact Printing,” Materials Research Society Spring 2000 Meeting, Apr. 24, 2000, San Francisco, CA.
- “Microcontact Printing (µCP) of Electronic Materials Utilizing Focused Ion Beam Prepared Fabricated Printheads,” International Semiconductor Device Research Symposium (ISDRS), Dec. 1, 1999, Charlottesville, VA
- “Focused Ion Beam Printhead Fabrication,” Applied Electro-physics Laboratory (AePL) Seminar Series, Univ. of Virginia Dept. of Electrical Engineering, Feb. 26, 1999, Charlottesville, VA
Articles & Publications
- D.M. Longo, “Pro Hac Vice Admission before the Patent Trial and Appeal Board – Discretionary and for Good Cause,” Lexology (AIPLA) (Mar. 15, 2013), available at: http://www.lexology.com/library/Detail.aspx?g=e3d45f32-5591-408b-803f-4d6d8cc20e50.
- D.M. Longo, “Part 2: A Tale of Two Views – Substantial Evidence vs. a Thorough & Searching Inquiry, in a Post-KSR World,” Lexology (AIPLA) (Jul. 11, 2012), available at: http://www.lexology.com/library/detail.aspx?g=9ff996ea-d157-4174-838c-111ada3169ec.
- D.M. Longo, “Part 1: A Tale of Two Views – Substantial Evidence vs. a Thorough & Searching Inquiry, in a Post-KSR World,” Lexology (AIPLA) (Jun. 14, 2012), available at: http://www.lexology.com/library/detail.aspx?g=b08b792f-f3fd-4f54-8a82-0ce969712382.
- D.M. Longo, “In the Course of an Obviousness-Based Reversal of the BPAI, the CAFC Reminds Us that Drawings Can Be Used as Prior Art, without Referring to the Surrounding Description, Only if the Prior Art Features are Clearly Disclosed by the Drawing,” Lexology (AIPLA) (May 22, 2012), available at: http://www.lexology.com/library/detail.aspx?g=4d33308a-4ab7-40bb-8087-62186ca9cdb7.
- D.M. Longo, “Guest Post: Checking the “Staats” – in Broadening Reissue Practice, We Are Stuck in the “Doll”-drums,” Patently-O – The nation’s leading patent law blog (Mar. 7, 2012), available at: http://www.patentlyo.com/patent/2012/03/guest-post-checking-the-staats-in-broadening-reissuepractice-we-are-stuck-in-the-doll-drums.html.
- D.M. Longo and R.P. O’Quinn, “Checking the Staats: How Long is too Long to Give Adequate Public Notice in Broadening Reissue Patent Applications?” Duke Law & Technology Review, No. 009 (Nov. 7, 2011).
- Y. Liu, D.M. Longo, and R. Hull, “Ultra Rapid Nanostructuring of Polymethlmethacrylate (PMMA) films using Ga+ focused ion beams,” Appl. Phys. Lett., 82(3), 346-348, (2003).
- R. Hull, T. Chraska, Y. Liu, and D.M. Longo, “Microcontact Printing: New Mastering and Transfer Techniques for High Throughput, Resolution, and Depth of Focus,” Mat. Sci. Eng. C19, 383-392 (2002).
- D.M. Longo, W.E. Benson, T. Chraska, and R. Hull, “Deep Submicron Microcontact Printing of Electronic Materials Utilizing Focused Ion Beam Fabricated Printheads,” Appl. Phys. Lett., 78(7), 981-983, (2001).
- D.M. Longo and R. Hull, “Direct Focused Ion Beam Writing of Printheads for Pattern Transfer Utilizing Microcontact Printing,” Mat. Res. Soc. Symp. Proc.: Materials Development for Direct Write Technologies, 624, 157-162, (2001).
- D.M. Longo and R. Hull, “Microcontact Printing (µCP) of Electronic Materials Utilizing Focused Ion Beam Fabricated Printheads,” Proc. 1999 Intl. Semicond. Dev. Res. Symp., 33-36 (1999).
- R. Hull and D.M. Longo, “Development of a Nanoscale Printing Technology for Planar and Curved Surfaces,” Proc. 10th Intl. Work. Phys. Semicond. Dev., New Delhi, India, II, 974-981 (1999); also available through the Proceedings of SPIE (The Int’l Soc. of Optical Eng.) 3975, 974-981 (2000).
- D.M. Longo, J.M. Howe, and W.C. Johnson, “Development of a Focused Ion Beam (FIB) Technique to Minimize X-ray Fluorescence during Energy Dispersive X-ray Spectroscopy (EDS) of FIB Specimens in the Transmission Electron Microscope (TEM),” Ultramicroscopy, 80(2), 85-97, (1999).
- D.M. Longo, J.M. Howe, and W.C. Johnson, “Experimental Method for Determining Cliff-Lorimer Factors in Transmission Electron Microscopy (TEM) Utilizing Stepped Wedge-Shaped Specimens Prepared by Focused Ion Beam (FIB),” Ultramicroscopy, 80(2), 69-84, (1999). (Micrographs from this article selected by editor Pieter Kruit for the cover illustration of the Oct. 1999 issue of Ultramicroscopy.)
- D.M. Longo, J.M. Howe, and W.C. Johnson, “The Effect of Focused Ion Beam (FIB) Specimen Geometry on X-ray Fluorescence During Energy Dispersive X-ray Spectroscopy (EDS) Analysis in the Transmission Electron Microscope (TEM),” Proc. of Microscopy and Microanalysis, 4, 856-857, (1998).