Home Practice Bio. Articles PTAB Contact

Biographical Information

Photo of Joel Miller

Joel Miller has practiced law for over thirty‑five years, specializing in patent, trademark, copyright, unfair competition, and antitrust law. His practice encompasses a wide variety of assignments, including litigation, licensing, preparation of opinions, patent and trademark prosecution, appeals, and dispute resolution (please see the Description of the Practice).

Following graduation from law school, Joel served as a patent examiner in the U.S. Patent and Trademark Office, examining patent applications in the fields of telemetry, digital display systems, and computers. He also served as patent counsel and counsel for the Kearfott Division of the former Singer Company, an aerospace division and military subcontractor within the Government Products Group of Singer, handling patent matters, licensing, trade secret and export issues, and employment-related litigation. Prior to establishing his solo practice in 1991, he was associated with the law firm of Weil, Gotshal & Manges, and worked on a variety of patent, trademark, and antitrust matters.

While serving as in-house counsel, he undertook pro bono assignments in the municipal courts of Passaic County, New Jersey. As counsel for the defense, he tried numerous driving-while-intoxicated cases and a variety of motor vehicle and criminal matters.

Prior to graduation from law school, Joel held several engineering positions, designing and testing ground-based avionics systems for Aerocom, Inc., Coral Gables, Fla.; participating in contract management and design of the ARSR-3 long-range radar for the Federal Aviation Administration, Washington, D.C.; and overseeing the design, fabrication, and installation of a pilot precipitator at a coal-burning power plant for Research-Cottrell, Inc., Manville, N.J. He has also worked as a bench technician (testing and alignment of high-frequency crystal filters), a draftsman, and as a licensed broadcast engineer (WEEX and WJRH, Easton, PA).

Joel frequently participates in national, state, and local bar associations, and industry groups, serving in a leadership capacity and presenting legal educational programs (please see leadership positions below). In addition to traditional speaking engagements, he has chaired and developed clinical trial advocacy programs under the auspices of the American Bar Association (ABA) (please see programs and presentations below). He is the author of The Patent Trial and Appeal Board: Advocacy and Practice, Second Edition (2017), a manual for trial and appellate practice before the USPTO Patent Trial and Appeal Board (PTAB). Since 2013, Joel has focused his efforts primarily on writing and updating the PTAB book.

Top of Page

Joel is active in a number of community groups, including amateur radio organizations, community orchestras and chamber music ensembles (violinist), and regional hiking and outdoor organizations. Previously, he was a member of two wilderness search-and-rescue and high-angle rescue teams. As an amateur radio operator (Extra Class amateur radio license W2TQ), he frequently participates in public service and emergency-preparedness events, and has organized and managed tactical communications systems for large-scale public events.

Education

J.D., 1978, University of Miami, Coral Gables, Florida
B.S.E.E., 1975, Lafayette College, Easton, Pennsylvania

Bar Admissions

Member of the District of Columbia, New Jersey, and New York Bars.
Admitted to practice before the U.S. Patent and Trademark Office.

Professional Activities


Programs and Presentations

[As noted above, since 2013, the time previously allocated to these efforts has been devoted to writing and maintaining the PTAB book.]

“Patents and technology: Managing protection for your products,” IEEE Technology Management Council and MTT/AP-Society, Paterson, N.J., May 8, 2013.

“How the courts ruled in 2012 and how it may affect your practice,” presentation to a corporate intellectual property legal department, Jan. 23, 2013.

“Patent Law for Engineers: How to safeguard your idea,” IEEE MTT-Society & AP-Society Joint Chapter 27th Annual Symposium, East Hanover, N.J., Oct. 4, 2012.

“Intellectual Property: Protecting the fruits of your labor,” IEEE/ACM Information Technology Professional Conference, Ewing Township, N.J., Mar. 9, 2012.

“Don’t Lose Your Appeal! Learn about the New Ex Parte Rules,” American Intellectual Property Law Assoc. (online program), Jan. 18, 2012.

“Appellate Advocacy and Practice before the USPTO Board of Patent Appeals and Interferences: How to draft a persuasive and compliant appeal brief,” N.J. Intellectual Property Law Assoc. Electronics, Telecom, and Software Patent Practice Update, New Brunswick, N.J., Nov. 9, 2011; also presented at the American Intellectual Property Law Assoc. 2011 Annual Meeting, Washington, D.C., Oct. 2011.

“What you have to prove at the PTO: Burdens of proof during patent examination and standards of review during appeal to the BPAI and the courts,” ABA Section of Intellectual Property Law 26th Annual Intellectual Property Law Conference, Arlington, Virginia, Apr. 2011.

Top of Page

“The U.S. Supreme Court’s Decision in Bilski v. Kappos: The ongoing controversy over what may be protected by a patent and the broader implications of the debate,” N.J. State Bar Assoc., Internet and Computer Law Committee, New Brunswick, N.J., Jan. 20, 2011.

“What to do about Section 101?,” American Intellectual Property Law Assoc. 2010 Annual Meeting, Washington, D.C., joint meeting of the Education, Patent Law, and Patent Litigation Committees, Oct. 22, 2010 (speaker, moderator, and organizer).

“Anatomy of an Infringement Claim: Analyzing and Responding to a Letter Asserting Trademark or Patent Infringement,” an interactive workshop, ABA Section of Intellectual Property Law 25th Annual Intellectual Property Law Conference, Arlington, Virginia, Apr. 2010.

“Foreign Filing Licenses, Secrecy Orders, and Export Controls: Pitfalls for the Unwary,” American Intellectual Property Law Assoc. 2009 Annual Meeting, Washington, D.C., Oct. 15, 2009.

“Anatomy of a Trademark Infringement Claim: Analyzing and Responding to a Claim Letter,” an interactive workshop, N.J. Trademark Counsel, Basking Ridge, N.J., Sept. 30, 2009.

“Patentable Subject Matter after In re Bilski,” ABA Section of Intellectual Property Law 24th Annual Intellectual Property Law Conference, Arlington, Virginia, Apr. 2009.

In re Bilski – Is your client’s method of doing business patentable?,” N.J. State Bar Assoc., Internet and Computer Law Committee, New Brunswick, N.J., Jan. 14, 2009.

“International Intellectual Property,” Nat’l Contract Management Assoc., Montclair, N.J., Nov. 18, 1998.

“Website Development Agreements: Allocating Rights and Obligations,” N.J. State Bar Assoc. 1998 Annual Meeting, Atlantic City, N.J., May 15, 1998.

Top of Page

“Justice and Jurisdiction along the Information Highway: Does the Internet have a Long Arm?,” Trademark Luncheon Club, West Orange, N.J., Oct. 9, 1996, and 1997 N.J. State Bar Assoc. Annual Meeting, Atlantic City, N.J., May 16, 1997.

“Computer Law: Substantive Legal Issues and Jurisdiction,” 1996 N.J. State Judicial College, Teaneck, N.J., Nov. 26, 1996.

“Patent Protection for Computer Software: Has Anything Changed at the Patent Office?,” N.J. State Bar Assoc., Computer-Related Law Committee, New Brunswick, N.J., Mar. 30, 1995.

“Insurance Coverage for Intellectual Property Disputes: Relief for Beleaguered Defendants,” Trademark Luncheon Club, West Orange, N.J., Nov. 9, 1994.

“Copyright Basics – A Brief Overview of Copyright Law as it relates to Computers and Computer Technology,” N.J. State Bar Assoc. 1994 Annual Meeting, Atlantic City, N.J., May 14, 1994.

Program Chair, ABA/USTA National Institute on Trademark Trial Advocacy, Tarrytown, N.Y., June 1993.

Program Chair, Protecting the Computer Environment: Database Privacy and Computer Facility Security, N.J. State Bar Assoc. Computer-Related Law Committee, New Brunswick, N.J., Feb. 25, 1993.

Program Chair, ABA National Institute on Trademark Trial Advocacy, Boston, Nov. 1986.

Program Chair, ABA-AIPLA National Institute on Patent Trial Advocacy, Washington, D.C., Nov. 1984.

Top of Page

Associations and Leadership Positions

Fellow, American Bar Foundation (New York State chapter).

Chair, Legal Activities, Institute of Electrical and Electronics Engineers (IEEE), North Jersey Section, 2012–date.

Chair, Inter Partes Review Subcommittee, USPTO Affairs (Post Grant and Inter Partes) Committee, ABA Section of IP Law, 2011–2013.

Co-Chair, Patents and Legislative Affairs Subcommittee, Electronic and Computer Law Committee, AIPLA, 2008–2012.

Chair, Patentable Subject Matter Subcommittee, Software and Cloud Computing Committee, ABA Section of IP Law, 2008–2011.

Co-Chair, § 101 Subcommittee, Patent Law Committee, AIPLA, 2009–2011.

Member, Task Force Subcommittee on Business Method Patents, ABA Section of IP Law, 2009–2010.

Master, Essex Inn of Court, Justice William A. Brennan, Jr. Chapter, Newark, N.J., American Inns of Court (1997–2000).

International Trademark Association (Project Editorial Board, 1997–1999).

Chair, Computer-Related Law Committee, N.J. State Bar Assoc., 1993–1995.

*     *     *

Top of Page

National Institute on Appellate Advocacy (ABA), 1984.

Diploma, National Institute for Trial Advocacy, Mid-Atlantic Regional, 1983.


Prior Affiliations

Patent Examiner, U.S. Patent and Trademark Office, Washington, D.C.
The Singer Company, Kearfott (Aerospace) Division, Little Falls, N.J.
Weil, Gotshal & Manges, New York, N.Y.

Community Affiliations

American Radio Relay League
Westchester Emergency Communications Association
Adirondack Mountain Club
Appalachian Mountain Club
New York-New Jersey Trail Conference

*     *     *

Top of Page