Ernest J. Beffel Jr.
Ernie is valued for creativity and excellence in the practice of intellectual property law. His experience is both broad and deep, and includes patent prosecution and development, the preparation of opinions on infringement and validity of patents, pre-litigation analysis and resolution of licensing issues, due diligence in connection with mergers and acquisitions, as well as general advice pertaining to IP strategies and portfolio management. In his fourth decade of practice, Ernie holds a peer-review rating from Martindale-Hubbell of AV-Preeminent and an AVVO rating of 10.0.
Ernie is focused on asset building and problem solving. He consistently maintains perspective on how the law fits into his client’s larger commercial strategy. Ernie represents some of the most innovative organizations of today. His clients have ranged in size from multi-national corporations, to foreign and domestic privately-owned companies, to small U.S.-based ventures. His clients appreciate that he knows the law, inside and out, and is able to deliver timely and understandable answers to even the most complicated questions.
Sincere and thoroughly prepared, Ernie is well-versed not only in the variety of technical and scientific subject matter involved in IP-related matters, but also at converting such complex information into easily-understood straight-talk. Ernie has been involved in the preparation and prosecution of patent applications in technologies including computer programs, database architectures, computer-implemented business methods, digital circuitry and IC manufacturing.
Ernie has also prepared and prosecuted patent applications directed to cloud computing, Web Services protocols (WSDL, UDDI), mobile to desktop synchronization, and video on-demand; for business, directed to financial planning, inventory management, on-line auctions, banking and infrastructure for business-to-business ecommerce; for targeted advertising, directed to query context and disambiguation, clustering and classification, and text and non-text search engines; for network protocols, directed to adapters, access points and switches; for compression, error correction and signal processing; for automated testing of network components and telecommunications; for IC manufacturing, directed to design, processes and instrumentation of manufacturing, and capital equipment for IC production.
Prior to his patent counseling and prosecution practice, Ernie devoted 18 years to trial practice, handling technology disputes involving patents, engineering design, contracts, construction delay and failure, and environmental clean-up, with nine months in-trial time. He also resolved insurance coverage and bad faith, wrongful discharge, and racial discrimination cases. Ernie’s expertise as a trial lawyer has readily translated into the successful representation of clients, particularly before the USPTO. Ernie’s diplomacy and negotiation abilities, combined with trial presentation skills translated into WebEx interviews, have made him exceedingly effective in persuading Patent Examiners.
Ernie regularly speaks at seminars, conferences and meetings. His recent speaking engagements include webinars and NAPP annual meetings, addressing “PTO Examiner Interviewing Techniques and Tips in the Era of Hoteling, WebEx and Videoconferencing.” Over the years, he has acquired reputable praise for his techniques and strategies for examiner and inventor interviews. Ernie also gave annual lectures to foreign officers attending the National Defense University (ISMO program) on the role of patents in capital formation for startups, and for more than a decade of their visits to Silicon and Napa Valleys.
Ernie is a graduate of Stanford Law School and of the University of Michigan, College of Engineering (IE + OR), with Highest Honors, including Tau Beta Pi and Alpha Pi Mu. In 1999, Ernie joined his law school classmate, Mark Haynes, to co-found HBW.
Areas of Practice
- Management of Patent Portfolio
- Preparation of Opinions on Infringement and Validity of Patents
- Pre-Litigation Analysis and Resolution of licensing Issues
- Mergers and Acquisitions
- California, 1981
- U.S. Patent and Trademark Office
- Stanford Law School, Stanford, California
- J.D. – 1981
- University of Michigan
- B.S. – 1978
- Honors: With Highest Honors
- Major: Industrial Engineering and Operations Research
- Speaker, “PTO Examiner Interviewing Techniques and Tips in the Era of Hoteling, WebEx and Videoconferencing.”
- National Defense University (ISMO program)
Honors and Awards
- Martindale-Hubbell of AV-Preeminent
- AVVO rating of 10.0