Mike DeSanctis

Mike DeSanctis is a patent attorney practicing intellectual property law with Hamilton, DeSanctis & Cha, LLP in Denver, Colorado. Mike is registered to practice before the U.S. Patent and Trademark Office (USPTO).

Practice Areas

  • Patent Preparation and Prosecution, specializing in Software Patent Applications
  • Counseling regarding Patent Portfolio Development and Monetization
  • IP Transactions (e.g., license agreements and patent portfolio acquisitions)
  • Patent Litigation Support (e.g., claim construction and invalidity contentions)
  • Patent Invalidity and Non-Infringement Opinions
  • Patent Reexaminations
  • Patent Reissuance
  • IP Due Diligence

Mike’s patent preparation and prosecution experience includes U.S. and foreign patent matters in diverse technology areas, including computer hardware architecture, network infrastructure, networking protocols, network traffic acceleration, anti-virus software, spam filtering, database applications, enterprise software, Web service and communication service architectures, Business Activity Monitoring (BAM), e-commerce, financial advisory services, computer graphics and rendering, broadband video commercial syndication, hardware design verification, Electronic Design Automation (EDA), medical device control systems, microprocessor architectures and instruction sets and Graphical User Interfaces (GUIs).

In addition to patenting activities, Mike has counseled clients regarding patent avoidance and assertion, as well as monetization and acquisition of IP assets. As such, Mike has considerable experience in both in-licensing and out-licensing of technology and patents, structuring and negotiating patent portfolio acquisitions, performing intellectual property due diligence, requesting patent reexaminations, achieving reissuance of patents and rendering opinions regarding patent invalidity and non-infringement.

Legal Experience

During his legal career, Mike has enjoyed representing both early stage high-tech companies and established industry leaders, such as Fortinet, Financial Engines, Intel Corporation, Apple Computer, eBay, E*Trade, Sun Microsystems, IBM, Nortel Networks, Mentor Graphics, Oracle, Silicon Graphics, Trimble Navigation and WebTV Networks.

Mike has focused on intellectual property procurement and providing strategic counseling to clients at critical developmental stages. Typically, the patent applications prepared and prosecuted by Mike relate to fundamental developments having great significance to his clients, including patent applications that are intended to become core assets of newly formed companies. In other cases, clients entrust their patent portfolios with Mike because of his proven ability to efficiently produce successful results where larger firms have failed and/or generated excessive fees.

Mike also helps inventors and patent owners with monetization of their patent assets. Mike’s legal guidance and assistance indentifying and negotiating revenue-generating opportunities with prospective licensees and prospective acquirers has resulted in clients securing millions of dollars in licensing royalties.

Additionally, Mike provides clients with patent litigation support or an alternative to litigation by challenging the validity of questionable patents through patent reexamination proceedings initiated within the context of the USPTO.

After attending law school, Mike practiced as an intellectual property attorney for a prominent national intellectual property boutique firm, Blakely, Sokoloff, Taylor & Zafman, where he was the founding and managing partner of the firm’s Denver office.

Prior to co-founding the firm of Hamilton, DeSanctis & Cha, LLP, Mike was a partner in the Patent Practice Group at the general practice law firm of Faegre & Benson.

Technical Experience

Before beginning his law career, Mike gained valuable industry experience as a software engineer at Delco Systems Operations and Motorola Inc., GEG, where he developed aircraft navigation software and designed and developed real-time message processing software for the Army’s JSTARS BLOCK I Ground Station Module that was successfully deployed in Desert Storm. Mike also designed, developed and tested real-time embedded software for a low cost satellite terminal for MILSTAR and FEP satellites as a senior software engineer at Stanford Telecommunications, Inc.

Education

  • Bachelors of Science degree in Computer Science (B.S.C.S.) from the University of California, Santa Barbara (UCSB) College of Engineering (1990).
  • Juris Doctor (J.D.) from Santa Clara University (SCU) School of Law (1996).

Continuing Legal Education (CLE) Presentations / Speeches

  • A Blind Man Will Not Thank You for a Looking-Glass: Aligning Your Patent Strategy with the Company’s Business Goals – Intellectual Property and Technology Institute, Colorado Bar Association CLE (2004)
  • Intellectual Property Portfolio Planning Considerations – University of Colorado at Boulder Optical Science and Engineering Program (OSEP) (2004)
  • License or Litigate: Strategic Considerations in Monetizing a Patent Portfolio – CLE INTERNATIONAL Strategic IP Planning Conference – Denver, CO (2004)
  • Patent Strategy: Tailoring your Patent Strategy to your Company’s Business Goals – Faegre & Benson LLP, IP and Tech Law Sunrise Series – Boulder, CO (2004)
  • Current Trends in Claim Construction – Intellectual Property Institute, Colorado Bar Association CLE (2003)
  • A Patent Primer – Interdisciplinary Telecommunications Department, University of Colorado (2002)
  • Patents and their Effect on Company Valuation – Silicon Flatirons Telecommunications Program (2002)
  • The Importance and Strategies for Protecting Intellectual Property – Silicon Flatirons Telecommunications Program (2001)

Admitted to Practice (State)

  • Colorado
  • California (inactive status)

Admitted to Practice (Federal)

  • U.S. Patent and Trademark Office
  • U.S. District of Colorado
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court, Northern District of California