Sean D. Detweiler

An engineer, a Registered Patent Attorney, a former in-house patent counsel, and a former adjunct professor, Sean is a member of the Firm’s Intellectual Property practice, the leader of its high-tech patent practice, and the head of its Trademark practice.

He is well known as being a highly responsive, collaborative attorney, having over 20 years of experience in IP. His work encompasses many areas of intellectual property protection, including provisional, non-provisional/utility patent and design patent preparation and prosecution, trademark registration, IP due diligence, IP audits, IP governance, and the provision of patentability, non-infringement and freedom-to-operate opinions, as well as identification of infringing competitor products. Sean works closely with a wide range of clients to fulfill their intellectual property needs, including IP portfolio development, strategy, and implementation for startup companies with foundational patent and trademark filings, for emerging growth companies with market share they need to protect from competitors, and for international conglomerates with massive US and international patent and trademark portfolios.

Sean works to achieve client goals in protecting patentable inventions in a broad collection of technologies, including medical devices, consumer products, HVAC, energy, clean tech, footwear, apparel, sporting goods, mechanical, electrical, software, computer hardware, telecommunications, and combination technologies including Internet of Things (IoT) technologies, robotics, and mechatronics, securing both utility patent protection, and design patent protection for ornamental product designs.

Representative Matters

• Managed, built and grew an international patent portfolio for a cutting edge platform technology of a US company leading up to its acquisition for almost $700 million.
• Assisted a client in navigating the intellectual property due diligence investigation for a successful $15 million venture financing.
• Successfully implemented a long-term patent strategy for a startup company to protect vital intellectual property with limited resources by protecting key aspects of their technology with a single provisional application that kept competitors at bay through the company’s growth to a multi-million dollar corporation with a US and International patent portfolio.
• Drafted and successfully prosecuted numerous patent applications in crowded technology spaces to obtain valuable patent protection.
• Worked closely with engineering teams to analyze prior art patents and design new and innovative products while avoiding infringement of competitor patents.
• Authored/drafted U.S. Patent No. 8,945,235, a 2017 BPLA Invented Here! Honoree

Affiliations

American Intellectual Property Law Association (AIPLA)

Boston Patent Law Association (BPLA)

Massachusetts Bar Association

American Society of Mechanical Engineers (ASME)

Speaking Engagements

Panelist, Intellectual Property: The Ins and Outs, TechSandBox

Office Hours, Topic: Patent, TechSandBox

Speaker, Accelerate Program Bootcamp, Wentworth Institute of Technology

Speaker, Legal Basics for Game Companies, Morse Seminar

Speaker, Morse Patent Law Discussion Series, Morse Seminar

Speaker, Conducting Business in the U.S., swissnex Boston - Consulate of Switzerland

Speaker, Intellectual Property Overview, Massachusetts Society of Plastic Surgeons

Publications

Trademarks - Use Them (Properly) or Lose Them: How a trademark is used must be managed carefully to protect its value and avoid losing rights and registrations

Federal Registration of Trademarks to Protect Intellectual Property: Advantages over common law trademark rights include instant nationwide protection, effective notice to competitors, and ease of assigning, licensing, and defending

Informational Perhaps, But Not a Trademark!: Recent Wal-Mart case before Trademark Trial and Appeal Board shows registering informational slogans remains a difficult endeavor

Creating a Strong Trademark: Key Considerations

Multicolored Leaves More Inherently Distinctive than Multicolored Trademarks: TTAB Rules Multicolored Trademarks on Product Packaging Are Never Inherently Distinctive

As the Trade Show Season Ramps Up, Don't Forget to Harvest Your Patentable Inventions Before Heading to the Show

Matal v. Tam: The Supreme Court Rejects the Prohibition on Disparaging Trademarks

Why You Should Spend Dollars on Patent, Trademark Protection

Trademark Owners Thinking Twice About Using Low-Cost Registration Services

Global Medical Device Regulatory Strategy

IP Due Diligence: Patentability vs. Patent Infringement

Star Wars And Technology: May The Patent Office Be With You…

Robotics: Musings of a Patent Attorney

Duck Dynasty or Patent Dynasty?

Do You Deserve Better from Your Patent Attorney?

Outside the office

Founding Member – Town Sustainable Energy Planning Committee

Founding Member – Sustainable Energy Committee

Master – Arthur J. Gajarsa Inn of Court (past)

Outside of the office, Sean enjoys spending time with family, coaching soccer, and hanging out with friends.

News & Events

• Trademarks – Use Them (Properly) or Lose Them
  How a trademark is used must be managed carefully to protect its value and avoid losing rights and registrations
  March 25, 2019
• Federal Registration of Trademarks to Protect Intellectual Property
  Advantages over common law trademark rights include instant nationwide protection, effective notice to competitors, and ease of assigning, licensing, and defending
  February 28, 2019
• Informational Perhaps, But Not a Trademark!
  Recent Wal-Mart case before Trademark Trial and Appeal Board shows registering informational slogans remains a difficult endeavor
  February 4, 2019
• Creating a Strong Trademark
  Key Considerations
  October 15, 2018
• Multicolored Leaves More Inherently Distinctive than Multicolored Trademarks:
  TTAB Rules Multicolored Trademarks on Product Packaging Are Never Inherently Distinctive
  October 2, 2018