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Biography

Roland McAndrews has over 25 years of patent experience dedicated to portfolio analysis, patent procurement, opinion writing, pre-litigation analysis, and intellectual property licensing. The Legal 500 US, IAM Patent 1000, and Managing IP have all recognized Roland as a top attorney, with IAM calling him “[one] of the finest prosecution experts in the country” as well as “an excellent leader and patent strategist who builds the best teams to get the best outcome.”

Roland has counseled both small and large companies, from diligence projects for start-up companies as targets for acquisition, to portfolio management for some of the largest companies in the U.S. He is a prolific opinion strategist, having authored all types of patent legal opinions involving diverse technologies. With this experience, Roland brings a recognition of the risk profile of a patent concern and the most cost effective way to minimize the risk.

Roland started his patent career as a patent examiner at the U.S. Patent and Trademark Office (USPTO). He spent five years at the USPTO, achieving signatory authority for Office Actions before leaving for law firm practice. He brings that examining experience to bear as he prosecutes his client’s patent applications. He achieved his law degree at night while working full time for Finnegan, Henderson, Farabow, Garrett & Dunner (Finnegan), a leading intellectual property firm. He spent 15 years at Finnegan, the last six as a partner. As a partner at Finnegan, Roland assisted in managing the prosecution activities for one of the largest prosecution clients in the firm. In 2012, Roland co-founded Bookoff McAndrews with the goal of providing high quality, sophisticated patent counseling at more reasonable rates than BigLaw.

Roland’s technical experience extends to diverse technologies in the mechanical and electro-mechanical fields, with a particular emphasis on heavy machinery and medical device technologies. Roland regularly presents on patent opinion and patent prosecution topics.

Highlights

  • For over 10 years, helped manage the prosecution of thousands of matters for a Fortune 100 company, including complex reissue, reexamination, and opinion matters.
  • Managed numerous due diligence investigations for companies in the medical device industry, resulting in significant venture capital investments.
  • Implemented patent strategies in various sporting goods fields, including mining a portfolio to cover commercial products that resulted in a multi-million dollar license, and building another portfolio and negotiating technology licenses to permit the client to commercialize its ground-breaking technology.

Bar Admissions

  • District of Columbia
  • Pennsylvania
  • American Bar Association

Education

  • Catholic University of America, Columbus School of Law, J.D., 1998
  • Villanova University, B.M.E., 1990

Professional Recognition

  • Recognized by Managing Intellectual Property as a “Patent Star” for Patent Prosecution, 2016-2018.
  • Recognized by IAM Patent 1000 as a “Leading Patent Professional” for Patent Prosecution, 2015-2018.
  • Recognized by LMG Life Sciences as a “Star” for Intellectual Property and Patent Strategy & Management, 2017-2018.

Publications

  • Author. “Follow the Pendulum – Draft Your Patent Application with Changes in the Law in Mind,” BoMc Blog, August 26, 2015.
  • Author. “The Wrinkles of Anticipation,” BoMc Blog, May 6, 2015.
  • Coauthor. “The Expanding Role Of Patent Examiner Interviews,” Law360, July 25, 2013.
  • Coauthor. “Reissue Applications – Avoiding the Rule Against Recapture with Claims that Are Materially Narrowed in Other Aspects,” Bloomberg Law Reports, January 24, 2011.

Organizations

  • Intellectual Property Owners Association (IPO), U.S. Office Patent Practice Committee Vice-Chair, 2018

Speaking Engagements