Ron C. Harris, Jr., Principal

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Ron Harris’s day-to-day practice involves all aspects of global patent application preparation and prosecution. He provides daily advice in chemical, pharmaceutical, medical device, software, mechanical, electrical and biochemical technologies.

His focus is patent law and its implications on global business objectives:

  • Prevailing in a variety of patent and other intellectual property litigation matters;
  • Counseling clients in patent portfolio management, patent validity and infringement, and strategic R&D planning, business development and freedom-to-operate matters;
  • Performing intellectual property due diligence investigations with respect to acquisitions and divestitures;
  • Drafting and negotiating patent and trademark licenses, and settlement, technology development, confidentiality, and purchase and sale agreements;
  • Advising large companies and international law firms on how to restructure their patent drafting approach to maximize valid coverage in the US, Europe, Japan, and China – as the law develops – and with an eye towards future trends and fall back positions;
  • Receiving intensive on-site training from prestigious patent firms (China in 2010);
  • Lecturing worldwide (e.g., Washington, DC, Tokyo (JPAA and JIPA), Beijing, Taiwan (TWPAA), London (CIPA), Munich, Paris).

Technical Experience

  • Instructing at premier analytical chemistry research university;
  • Conducting inorganic and organic synthesis and electro-chemical studies of various transition metal complexes under the direction of Thomas J. Meyer, Ph.D.;
  • Identifying HIV nucleosome positions during recombinant DNA studies of the HIV genome for the Chairman of the NIH AIDS grant committee, Jack Griffith, Ph.D.;
  • Researching and developing quantitative, microelectronic medical device biosensors – exclusively licensed to several global market leaders.

Recent Representations

  • Advising large pharmaceutical company’s defense of inter partes reexamination to avoid intervening rights;
  • Appealing medical device company’s ex parte reexamination to CAFC, to obtain remand back to USPTO;
  • Optimizing medical device company’s US post-grant portfolio strategy from among eight possible proceedings, without the benefit of final PTO rules;
  • Quieting aggressive trademark bully in multiple international jurisdictions;
  • Cutting short bad faith derived filing of specialty chemical client’s invention by industry giant;
  • Filing software venture’s core technology to obtain EPO search results before Paris Convention deadline;
  • Designing and drafting medical device company’s global patent and design portfolio;
  • Preventing cross border and divided infringement design around of hundreds of Global 500 clients’ patents;
  • Clearing alternative energy company’s path to funding through exhaustive and decisive invalidity opinions;
  • Optimizing non-US patent law firm’s FITF, FTI & hybrid application prior art regime filing strategies;
  • Introducing startup to ideal testing facilities and investors.

Prior to starting the Harris Firm, Mr. Harris gained extensive in-depth experience in private practice and government service. He was associated with a highly respected patent boutique firm in Washington, DC. He was also an attorney advisor intern for the Hon. Delbert R. Terrill, Administrative Law Judge for Intellectual Property, United States International Trade Commission (“USITC”) in Washington, D.C., and a medical device and business methods patent examiner at the USPTO.

* Mr. Harris is registered as a Gaikokuho Jimu Bengoshi in Japan. He practices District of Columbia and U.S. federal law in Japan but not Japanese law.

3-3-3 Higashiazabu, Suite 302, Minato-ku
Tokyo 106–0044
T: +81 3 4455 7215
F: +81 3 6800 6868
Email: Ron Harris
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Education
University of Georgia, J.D.
University of North Carolina at Chapel Hill, B.S., Chemistry

Admissions
District of Columbia
U.S. Patent and Trademark Office
U.S. Court of Appeals for the Federal Circuit
Japan as a G.J.B.*

Languages
Japanese (beginner)
Russian (beginner)
French (beginner)
English (native)

Affiliations
District of Columbia Bar Association
AIPLA – Europe, Japan and Far East Practice Committees
Tokyo Intellectual Property Inn of Court

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