William A. English
Academic and Professional Credentials
Loyola Law School, J.D. 1997
University of California, Irvine (UCI), B.S. Mechanical Engineering, 1987
Admitted to California State Bar
Registered Patent Attorney, U.S. Patent and Trademark Office
Admitted to U.S. District Courts (Central, Northern, Southern Districts of California)
Background and Experience
The primary focus of William A. English's practice is assisting clients in developing and protecting their intellectual property portfolios. Mr. English has worked with large and small companies, start-ups, and individuals.
Before and during law school, Mr. English spent nine years in business and technical sales in the commercial and industrial construction market working with contractors, mechanical engineers, and architects, designing and selling industrial ventilation, air conditioning, and airflow acoustical systems. These experiences trained him to develop creative business solutions, as well as legal solutions, to issues that companies encounter related to their intellectual property.
His legal practice has included preparing and prosecuting hundreds of U.S. and foreign patent applications. In addition, Mr. English has extensive experience in assisting clients with freedom to practice issues, conducting clearance searches and analyses, and advising clients with design-around and other options. He has prepared numerous written opinions regarding patent validity and infringement issues.
Mr. English has been involved in many due diligence activities, both from the perspective of entities pursuing funding or partnerships, and from the perspective of potential investors and acquirers. He has also assisted clients in obtaining licenses to technology, and in granting licenses to their own intellectual property.
Mr. English has represented clients in administrative proceedings, including patent interferences before the Board of Patent Appeals and Interferences ("BPAI"), oppositions and cancellations before the Trademark Trial and Appeal Board ("TTAB"), and domain name disputes using the Internet Corporation for Assigned Name and Numbers ("ICANN") procedures. He has also represented clients in Federal Court litigation, including patent infringement and unfair competition cases. He has assisted clients with policing activities of competitors and others infringing upon their intellectual property rights. He has also prosecuted U.S. and foreign trademark registrations, and registered clients' trademarks with U.S. Customs to block importation of infringing knock-offs.
Within each of these areas of practice, Mr. English has worked in several different technological fields, acquiring particular expertise in a variety of medical technologies, such as cardiology, radio frequency ablation, ultrasound therapy, and other surgical and medical treatment devices, systems, and procedures. In addition, he has assisted clients in a variety of mechanical, electrical, software, and manufacturing technologies.