George J. Jakobsche

George J. Jakobsche

Attorney

t:
617-443-9292, ext 308
f:
617-443-0004
e:
gjakobsche@sunsteinlaw.com
Suffolk University Law School
J.D., cum laude
Rensselaer Polytechnic Institute
B.S.

Practice Areas

Education

  • Suffolk University Law School J.D., cum laude
  • Rensselaer Polytechnic Institute B.S.

Profile

George’s extensive experience as a software engineer, in-house patent counsel and private practice patent attorney gives him a unique set of technical, legal and business skills and insights to counsel clients on intellectual property issues and to propose business-savvy solutions. He helps startups and established companies decide what to protect with patents and trademarks, what to keep as trade secrets, and how to build IP portfolios that are attractive to investors, without breaking the bank. His practice includes preparing patent applications, formulating IP strategies and counseling clients on matters involving IP rights of others, such as defending against asserted claims, designing around competitors’ patents and freedom-to-operate studies.

Experience

  • Prosecuted patent applications and advised clients in many technology areas including network storage, real-time computer networks, robotics, Internet search and advertising, user/computer interfaces, micro-electro-mechanical systems (MEMS), semiconductors and semiconductor packages, image processing, computer simulation, optics, medical devices, computed tomography, mechanical apparatus and business methods.
  • Analyzed clients’ innovations and the business and competitive contexts in which the clients operate. Based on these analyses, provided advice on how best to protect the clients’ innovations. Advised clients about combinations of intellectual property rights (patent, copyright, trade secret and/or trademark) that best fit the clients’ business objectives, as well as which combination of defensive, offensive, royalty-generating and/or blocking patents meet the clients’ needs.
  • Counseled clients who wish to operate in technology areas in which others own patents. Helped clients evaluate the applicability of existing patents to proposed or existing products and services, as well as the validity of these patents and how to design around existing patents.
  • While in-house patent counsel for a telecommunication equipment manufacturer, established the company’s patent program and developed policies and procedures for mining inventions and evaluating invention disclosures.
  • Advised clients and developed forms, policies and procedures for encouraging, collecting and managing invention disclosures and managing patent portfolios. Developed and delivered related training to engineers, managers, operations personnel and legal staff.
  • Held a variety of software engineering and consulting positions in the computer industry, primarily with a leading Massachusetts computer manufacturer. Has hands-on experience with computer software and hardware, networking and telecommunication systems. Designed transaction processing systems, computer hardware simulators and device drivers.
  • Taught graduate-level courses in computer science at Boston University’s Metropolitan College, including programming, computer architecture and logic design.

Professional Involvement

  • Member of the Boston Patent Law Association
  • Membership in IEEE and ACM; Treasurer IEEE/ComSoc (Boston Chapter)

Bar and Court Admissions

  • Massachusetts
  • U.S. Patent and Trademark Office
  • U.S. District Court for the District of Massachusetts
  • U.S. Court of Appeals for the Federal Circuit

Practice areas

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