Jon Gibbons
Jon A. Gibbons is a founding member of Fleit Intellectual Property Law. His practice focuses on all aspects of patent, trademark and copyright law. Jon has extensive experience in licensing and working with many technologies including software, electrical, and computer engineering. Jon represents clients ranging from Fortune 50 companies to individual inventors. Jon is a frequent lecturer on intellectual property law at universities, companies, and organizations throughout the US. Before becoming an attorney, Jon was an automation and robotics engineer at IBM at which time he was a licensed Professional Engineer. Jon is a Florida Board Certified Intellectual Property Attorney.
Education
– JD, University of Miami
– Intellectual Property Summer Institute, Franklin Pierce Law Center
– MS, Syracuse University, Electrical Engineering
– BS, Rutgers University, Electrical Engineering
– Graduate Business Administration Courses, Rensselaer Polytechnic Institute
Focus of Practice
Patent Prosecution; Patentability, Non-Infringement/Clearance, Invalidity, and Landscape Opinions; Patent Post Grant Proceedings (IPRs and CBRs); Patent Litigation Support; Trademark Prosecution; Trademark Oppositions and Cancellations; Trade Dress; IP Licensing and Harvesting; Due Diligence; Expert Witness Testimony.
Bar Memberships/Court Memberships
– United States Patent and Trademark Office
– Florida Bar (Board Certified in Intellectual Property Law)
– Southern District Court of Florida (Federal Court)
Professional Associations
– American Intellectual Property Law Association
– Intellectual Property Association of South Florida
– Association of University Technology Managers
Seminars and Publications
– Frequent Guest Lecturer in Intellectual Property at Florida Atlantic University, Florida State University, University of Central Florida, University of Florida and University of South Florida
– 2018 Patent Law Topics: i) Avoiding 101 & 112: Claiming Strategies For IBM Watson® and Other Machine Learning Systems, ii) Maintaining Novelty with Pre-filing Disclosure Events Under the AIA: Exceptions To 102 Prior Art, and iii) How Much Use Is Fair? Reviewing The Boundaries Of Fair Use In Text, Multimedia, & Data Mining (IBM Labs)
– University Technology Transfer Topics: i) Comparing Copyright Protection of Software vs. Utility Patents, Design Patents and Contract Law; ii) Protecting Databases; iii) Planning to Avoid 101 Rejections Under Alice during the Patent Evaluation and Prosecution Process; iv) To Pay or Not to Pay A Maintenance Fee, That is the Question – Using Patent Metrics as Comparative Measure of Patent Licensable Value (University of Central Florida, University of Florida, and University of South Florida)
– Review Of Restriction Of Invention / Election Of Species And How Rejoinder Works And Obvious Rejections: Recent Case Law On Section 103 (Cisco, BlackBerry, Freescale Semiconductor, IBM Labs & University of Florida)
– Managing Your IP Portfolio in view of New Case Law (Tyco, Jarden, Freescale Semiconductor & IBM Labs, University of Florida)
– Overview of Intellectual Property & Applications To Your Business (Florida Atlantic University Business School)
– Life After KSR: Traversing the Prima Facie Case of OBVIOUSNESS (Tyco, Sunbeam, Xerox, Motorola & IBM Labs)
– Recent Cases Affecting Your Patent Prosecution Practice (IBM & Motorola Labs)
– Empirical Benchmarks For Maintenance Fees (University of Florida Technology)
– Legal Issues In Cyber Space (Florida 100 Conference)
– The Mechanics of Software Development; Quality Control Issue and Strategies (TechLaw Publication))
Adjunct Professorships
– Former Adjunct Professor, C/C++ Software, Florida Atlantic University, Boca Raton, FL
– Former Adjunct Professor, C/C++ Software, Dutchees County Community College, Poughkeepsie NY
Community Involvement
– Rotary Club of Fort Lauderdale/Cypress Creek – Member
– Boca Helping Hands – volunteer food pantry warehouse worker – March 2020 to present
– Boy Scout Troop 356 Boca Raton – Committee Chair and Assistant Scout Master
– Board Member of Tradewinds & Atlantic Railroad, Inc. for rideable live steam trains at Tradewinds Park
– Founding Mentor for Tech Runway, Florida Atlantic University
– Founding Judge for Florida Atlantic University – Annual Business Plan Competition
– Judge for Saint Andrew’s School Frontiers in Science, Patent Competition and Robotics Group
– U.S. Peace Corps Volunteer – Engineer for Rural Drinking Water Program, Volunteer Leader
Previous Experience
– Founding Attorney, Intellectual Property Practice Group, Gunster, Yoakley & Stewart, P.A.
– Technology Licensing Program Manager, IBM Boca Raton
Honors
– Returned Peace Corps Volunteer, Beyond War Award
Articles and Publications
– Contracting the Use of Your Web Page Content: Is it Fair Use? (Univ. of Miami, Law & Internet Seminar)
– Substantial Similarity of Digital Music Sampling: Using Computers as Experts in the Courtroom (Univ. of Miami, Music Copyright Seminar)
– Legal Q&A – How to Fight IP Leakage In Faculty Consulting Agreements (Technology Transfer Tactics Magazine)