Rafael Perez-Pineiro Attorney Profile on UpCounsel
Rafael Perez-Pineiro

Rafael Perez-Pineiro

Attorney at Law

Miami
Florida
Licensed in
FL, Patent Bar
George Washington University Law School
5.0 5
Clear Communication
Response Time
Knowledgeable
Meets Deadlines
out of 2 reviews
About
Rafael is a registered patent attorney with nearly 20 years of experience in the field of intellectual property law. Prior to becoming an attorney, Rafael completed a master’s degree in electrical engineering, and held positions with the U.S. Patent Office as a Patent Examiner and with the NSA as an electronics engineer. Rafael has prosecuted hundreds of patent and trademark applications internationally, assisting clients from a wide range of industries, including software, electronics, medical devices, green energy, and furniture manufacturing. Rafael has managed litigations across the U.S. and has acted as lead counsel in post-grant… read more proceedings before the Patent Trial and Appeal Board.
16
Years
experience
Fortune 500 Badge
Top 200 Firm Badge

Representative Clients

Practice Areas

Client Reviews

5.0
Clear Communication
Response Time
Knowledgeable
Meets Deadlines
out of 2 reviews
Clear Communication
Response Time
Knowledgeable
Meets Deadlines

"Rafael is an outstanding patent attorney with a good mix of legal, technical and business skills."

Patent Portfolio Management
Posted on Feb 12, 2018
Clear Communication
Response Time
Knowledgeable
Meets Deadlines

"Rafael was an outstanding patent attorney who always helped the process rather than hindered it. In addition he always saw the positives in the disclosures and always tried to help out in various ways. When Rafael left IBM our group suffered substantially due to his absence. He was greatly missed and I am sure very valued at his next company. Rafael was a true pleasure to work with."

Evaluation of Invention and Preparation of Patent Application
Posted on Feb 12, 2018

Work History

The Brickell IP Group, PLLC

Partner

Oct 2017 - Present

Prepare and prosecute patent and trademark applications in various fields, including wireless technology, software, power generation, digital signal processing, and furniture designs. Author patent infringement and invalidity opinions. Counsel clients on patent, copyright, and trademark matters. Handle IP litigation and draft commercial agreements.

Oct 2017 - Present

McDonald Hopkins

Partner

Jun 2016 - Oct 2017

Handled all aspects of litigations involving the alleged infringement of patented wireless technology, and copyright infringement and trade secrets misappropriation of audiovisual works, including direct examination of witness at preliminary injunction hearing, presenting evidence of non-infringement in open court, and settling the disputes. Served as a patent legal expert and a technology expert

Jun 2016 - Oct 2017

Feldman Gale

Partner

Apr 2009 - Jun 2016

Served as Lead Counsel in several proceedings before the Patent Trial and Appeal Board (“PTAB”), including Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) proceedings, including Lead Counsel work at a CBM trial. Managed all aspects of IP litigation. Counseled clients on use of open-source software. Assisted with the drafting of merger and asset purchase agreements.

Apr 2009 - Jun 2016

IBM

IP Attorney

Jul 2003 - Mar 2009

Drafted guidelines for use of open-source code. Negotiated and reviewed membership agreements of standards organizations. Evaluated invention submissions and managed prosecution of patents. Briefed senior management on IP issues, including domestic patent infringement and trademark opposition proceedings. Supported IP portfolio divestitures and IP licensing. Drafted commercial agreements.

Jul 2003 - Mar 2009

Stroock & Stroock

Associate

Jul 2005 - Jul 2006

Managed all pre-trial aspects of IP litigation including patent, copyright, trademark, and unfair competition disputes. Argued discovery and Markman hearings. Conducted and defended depositions of parties and key witnesses. Drafted briefs and summary judgment motions. Prepared pre-trial disclosures and stipulations. Assisted experts in the preparation of expert reports.

Jul 2005 - Jul 2006

Blank Rome

Associate

Jul 2000 - Jul 2003

Argued claim constructions and presented technology tutorials at Markman hearings. Prepared and prosecuted patent and trademark applications.Evaluated operation of complex systems accused of patent infringement. Conducted pre-litigation investigation of potential patent infringers. Ascertained value and scope of patents as part of pre-acquisition due diligence. Authored opinions.

Jul 2000 - Jul 2003

Finnegan Henderson

Student Associate

Mar 1999 - Jul 2000

Prepared patent applications in the areas of electrical engineering and computer science. Responded to Office Actions from the United States Patent and Trademark Office (“USPTO”). Conducted research and analysis in various areas of patent law including contributory and induced infringement. Drafted legal memoranda and letters to clients.

Mar 1999 - Jul 2000

United States Patent and Trademark Office

Patent Examiner

Jun 1998 - Mar 1999

Examined patent applications, performed prior art searches, and drafted Office Actions in the area of computer networks. Interviewed with attorneys concerning pending patent applications.

Jun 1998 - Mar 1999

National Security Agency

Electronics Engineer

Aug 1994 - Jun 1998

Administered a Relational Database Management System. Developed database applications including reports, forms, and graphical user interfaces. Implemented encryption algorithms in several computer languages. Programmed microcontrollers in assembly language. Designed wireless communications systems and devices.

Aug 1994 - Jun 1998

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