William Uhr helps clients generate valuable IP and strategically navigate patent issues by assisting with patent procurement, patent counseling, and post-grant proceedings at the U.S. Patent and Trademark Office (USPTO). Will has experience with technologies ranging from software applications to energy exploration and vehicle control systems to apparel.
Prior to joining BoMc, Will was an attorney at a leading intellectual property law firm and later an international general practice law firm. In those positions, Will was part of teams that represented both patent owners and patent challengers before U.S. District Courts, the International Trade Commission, U.S. Court of Appeals for the Federal Circuit, and the U.S. Patent Trial and Appeal Board. From his experience on both sides of the litigation playing field, Will gained a thorough appreciation for how patents are wielded and parried, which he uses to inform the strategies he develops.
- Represented the world’s largest automobile manufacturer in U.S. patent procurement. Obtained dozens of utility patents relating to various automotive technologies including vehicle control systems, batteries, fuel cells, electric drive systems, and hybrid drive systems.
- Represented a multinational apparel manufacturer in worldwide patent procurement. Obtained dozens of utility and design patents relating to fabric technologies, outdoor equipment, and footwear.
- Represented prominent financial services companies in development of extensive patent portfolio covering payment, security, database, and user interface technologies.
- Represented an international consumer electronics corporation in enforcement of patent portfolio concerning digital video, ultimately achieving favorable settlement on behalf of client.
- Defended a manufacturer of interactive smart city devices in patent litigation and achieved favorable settlement following exclusion of the plaintiff’s proffered damages testimony.
- Successfully defended several pharmaceutical manufacturers in Hatch-Waxman litigation.
- Successfully defended clients named as respondents in several Section 337 investigations before the International Trade Commission.
- Devoted hundreds of hours to pro bono matters, which included assisting a prominent civil rights organization submit a brief as amicus curiae to the Supreme Court and assisting unaccompanied alien children with immigration proceedings.
- District of Columbia
- U.S. Patent and Trademark Office
- The George Washington University Law School, J.D., with honors, May 2014
- University of Maryland, College Park, B.S., Mechanical Engineering, May 2011
- Recognized in Best Lawyers: Ones to Watch in America for Intellectual Property Law, 2023-2024
- Author. “Patentee Barred from Arguing Patentability in IPR by Collateral Estoppel Effect of Earlier IPR,” BoMc Blog, February 27, 2023.
- Author. “Supreme Court Declines to Hear NHK-Fintiv Challenges,” BoMc Blog, February 9, 2022.
- Staff Editor. Unfair Competition and the ITC: A Treatise on Section 337 Actions, 2018-2019 ed.