Jeffrey Bergman

People

Title: Partner
Qualifications: U.S. Patent Attorney and Attorney at Law

Location: Houston

bergman@oshaliang.com

PRACTICE AREAS AND INDUSTRIES SERVED

Jeffrey Bergman’s practice encompasses all aspects of intellectual property law, including patent preparation and prosecution, IP litigation, validity and infringement opinions, client counseling in intellectual asset management and interference and appeals before the U.S. Patent and Trademark Office, in the fields of chemistry, materials science and mechanical engineering, with an emphasis in oilfield technologies and nanotechnology.

EXPERIENCE

Mr. Bergman has prepared and successfully prosecuted hundreds of U.S. patent applications in a wide variety of fields including nanotechnology, all aspects of chemical practice including organic and inorganic synthesis, polymer science, ion exchange systems, materials development, computer software, semiconductor fabrication and packaging, mechanical engineering, subterranean drilling and oilfield services.

He has successfully appealed numerous patent applications before the U.S. Patent Office Board of Patent Appeals and Interferences. In addition to his extensive involvement with domestic patent applications, Mr. Bergman has provided guidance to foreign counsel in the procurement of numerous foreign patents.  Mr. Bergman has also served as lead counsel in Federal Circuit appeals, as well as handling reexamination proceedings, reissue proceedings, and Inter Partes Review Proceedings.

Mr. Bergman has worked on a number of litigation matters involving oilfield and chemical technologies.  He has also provided counseling to clients on freedom to operate, invalidity, and non-infringement opinions.  Mr. Bergman has given numerous talks throughout Europe and Asia to clients and law firms to facilitate their understanding of the U.S. Patent system.

EDUCATION

  • J.D., cum laude, Order of the Barrons, University of Houston Law Center (2003)
  • M.S., Chemistry, Cornell University (1999)
  • B.S., Chemistry, magna cum laude, College of William & Mary (1997)

ADMISSIONS

  • State Bar of Texas
  • United States Court of Appeals for the Federal Circuit
  • United States Court of Appeals for the Fifth Circuit
  • United States District Court for the Eastern District of Texas
  • United States District Court for the Southern District of Texas
  • United States District Court for the Northern District of Texas
  • United States Patent and Trademark Office

PROFESSIONAL HONORS

  • “Texas Super Lawyer,” Thomson Reuters (2016)
  • “Top Lawyer,” H Texas magazine (2010, 2011, 2016)
  • “Texas Rising Star,” Thomson Reuters (2006 – 2015)
  • “America’s Top Patent Prosecutors of 2011,” Patent Buddy (2011)
  • “Professionals on the Fast Track,” H Texas magazine (2009)

APPEARANCES

  • Bloomberg Law Radio, multiple appearances, IP analysis of recent cases (2012-2014)

SELECTED PUBLICATIONS

  • Co-author, “The Quest for a Bulletproof Patent,” Lexis Nexis (2015)
  • Co-author, “Reexamination in the United States,” Patent Times, Vol.5, Japan (2002)
  • Co-author, “The Utility of Legal Opinions Regarding Infringement and Validity In The United States,” Patent Times, Japan
  • Selected scientific publications – Bergman et al., “Synthesis and Characterization of Polyolefin-Silicate Nanocomposites: A Catalyst Intercalation and In Situ Polymerization Approach,” Chem. Commun. (1999)
  • DeFotis, Bergman et al., “Uncompensated Antiferromagnetism and Phase Boundary with Variable Curvature in the Mixed Magnet MnNiCl,” Phys. Rev. B, 70, 184413 (2004)

SELECTED PRESENTATIONS

  • America Invents Act: Post-Grant Proceedings,” Houston, Texas (2013)
  • “Reexamination and Third Party Challenges,” All China Patent Agent Association (2012)
  • “337 Litigation,” Hangzhou, China (2012)
  • “Using IP to Fuel Your Business,” American Chemical Society’s Great Lakes Regional Meeting, Lincolnshire, Illinois (2009)
  • “Intellectual Property: A Manufacturing Perspective,” Society of Manufacturing Engineers Houston Chapter Meeting, Houston, Texas (2009)

PROFESSIONAL ACTIVITIES AND MEMBERSHIPS

  • Articles Editor, University of Houston Law Review
  • Intellectual Property Owner’s Patent Office Practice Committee Member
  • Houston Intellectual Property Lawyers Association
  • IP Inns of Court, Houston Chapter