home > About Us > Attorneys > Eduardo GARCIA-OTERO

Eduardo GARCIA-OTERO

Education(5 degrees) / Professional Background
1983 Bachelor of Science, Chemical Engineering, Washington University, Missouri, U.S.
1989 Bachelor of Science, Electrical Engineering, University of Missouri, Missouri, U.S.
1992 Master of Science, Nuclear Engineering, University of Missouri, Missouri, U.S.
1995 Master in Business Administration, University of Georgia, Georgia, U.S.
1998 Juris Doctorate, University of Georgia, Georgia, U.S.
1999-2001 Electronics Engineer, Secret Clearance, Department of Defense, Georgia, U.S.
2001-2005 Patent Examiner at U.S. Patent Office, Alexandria, Virginia, U.S.
2005-2017 Patent Attorney at large U.S. firms writing and prosecuting patent applications, U.S.
2017 Joined Nagoya International Patent Firm as “Of Counsel,” Nagoya, JAPAN
Credentials
Admitted to practice in Georgia (1998), USPTO (2005), Virginia (2005), and District of Colombia (2007).
Certified International Software Configuration Manager.
Technical Advisor for a Clean Air Vehicle Association (CAVA) team that won many awards.
Main Field of Expertise
My rare combination of chemical engineering and electrical engineering is very useful in many areas such as: design and manufacture of semiconductors, electrical control of thermal systems (heating and cooling systems), and electrical control of medical equipment. My experience includes writing and prosecuting many applications in telecommunications and in semiconductor fabrication.
Languages
Native in English, fluent in spoken Spanish, and very, very slowly learning Japanese.

Performance in Practice

I wrote many patent applications in telecommunications, and prosecuted thousands of U.S. patent applications (mostly from Japan and Korea). I defended 24 reexaminations (ex partes and inter partes) of telecommunication patents at the U.S. Patent Office with very good results. I wrote many complex petitions for general patent prosecution and for reexaminations.

Experience in Research Laboratories

I researched in many laboratories, including: Washington University Biological Transport Lab, Watlow Electric Research and Development Lab, Idaho National Engineering Lab, and Kyoto University Nuclear Lab. This research experience helps me to understand the client’s invention, and to write applications clearly and concisely. I especially enjoy dealing with inventors.

Experience as a Patent Examiner

I examined patent applications (in class 703: computer modeling, simulation, and emulation) at the U.S. Patent Office for 4 years, and wrote over 500 Office Actions. Thus, I received the same formal training that the current examiners receive. This experience and formal training helps me to understand the examiner, to accurately predict what the examiner will do in the future, and to quickly and efficiently receive strong patents for my clients. I begin every interview with an examiner by saying, “Hello, my name is Ed Garcia-Otero, I am a former patent examiner.”

Awards

  • American Nuclear Society Fellow to Kyoto University Nuclear Lab, Japan
  • National Merit Scholar
  • National Science Foundation Fellow
  • Regent's Fellow, University of Georgia
  • Chancellor’s Fellow, University of Missouri
  • Department of Energy Summer Fellow, Idaho National Engineering Lab (INEL)
  • Outstanding Achievement Award, University of Missouri


  • Legal and Technical Publications

    A Continuation-in-Part (CIP) is an Unholy Mix (RE: PowerOasis, Inc. v. T-Mobile USA, Inc.)
       Ed Garcia-Otero
       IP Update, Vol. 11, No. 4, April 2008

    Long Live the Reasonable Examiner (RE: Cargill, Inc. v. Canbra Foods, Ltd.)
       Ed Garcia-Otero
       IP Update, Vol. 10, No. 3, March 2007

    Vacuum Disengager for Tritium Removal from HYLIFE-II Reactor Flibe (LiF)2BeF2
       T.J. Dolan, G.R. Longhurst, E. Garcia-Otero, American Nuclear Society,
       Tenth Topical Meeting on the Technology of Fusion Energy, June 7, 1992.

    Hyperbolic Energy Analyzer: A Novel Diagnostic Ion Probe
       Edbertho Leal-Quiros, Mark A. Prelas, and Eduardo Garcia-Otero
       10th International Workshop on ECR Ion Sources, November 1, 1990.

    Electron Populations in the Hot-Electron Ring Region of Mirrors and Cusps
       Edbertho Leal-Quiros, Mark A. Prelas, and Eduardo Garcia-Otero
       Review of Scientific Instruments, 61 (10), October 1990.

    Mass Focused Stigmatic Proton Beam
       E. Garcia-Otero, E. Leal-Quiros, and M. Prelas,
       American Physical Society Division of Plasma Physics,
       Thirty-first Annual Meeting, Nov. 13, 1989.

    Lectures Given

    A Day in the Life of a Patent Examiner
    Recent U.S. Patent Office Procedures for Eligible Subject Matter
    A Survey of U.S. Patents
    A Survey of U.S. Intellectual Property Rights

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