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Joseph A. Farco focuses his practice on intellectual property matters including litigation, patent, and trade secret transactions.

As a trial patent lawyer, Joe represents patent owners, including inventors, and foreign and domestic companies in district court and the International Trade Commission. He drafts complaints, answers, 12(b) motions, discovery, and discovery motions, as well as takes and defends fact, expert, and 30(b)(6) depositions. Joe handles pre-filing due diligence for patent owners on how to best assert their patents; cease-and-desist correspondence to avoid litigation; and all aspects, including oral arguments, of Markman proceedings, summary judgement briefs, pre- and post-trial memoranda, technical and damages expert preparation and discovery, accounting and costs motions, appeals to the United States Court of Appeals for the Federal Circuit, and petitions for certiorari to the Supreme Court of the United States. He also spearheads electronic discovery and strategies for electronically searchable information (ESI).

Joe makes advance preparation and efficient strategy development his priorities, especially for witnesses who are not native English-speakers and where numerous experts are involved. He has prepared foreign and domestic witnesses and experts for trial.

As a registered patent attorney, Joe practices before the United States Patent and Trademark Office where he counsels clients from all over the world under America Invents Act (AIA) and pre-AIA rules to obtain patent protection in the form of utility and design patents. He has argued for his clients to obtain patents on their inventions through appeals to the Patent Trial and Appeal Board. He also has been involved in challenges to patent rights under ex parte reexaminations and inter partes review proceedings.

Joe uses his litigation and prosecution experience to provide opinions concerning patentability, non-infringement, and invalidity, to assist clients in making well-informed intellectual property decisions for their business or for helping avoid allegations of induced infringement and/or willful infringement of patents.

Prior to his legal career, Joe was a project engineer for Hamilton Sundstrand Space Systems, where he led a team of engineers to develop mechanical, electrical, and materials test analyses for the life-critical Extravehicular Mobility Unit worn by astronauts on space missions to and from the International Space Station.

Publications

  • “Queens Inventor and Entrepreneur Club Meeting,” America’s SBDC, New York, NY, October 15, 2019
  • Represented Canadian manufacturer of appliances in avoiding patent litigation over client’s cleaning devices during cease and desist discussions
  • Represented printing supplies manufacturer in litigation related to toner bottle products
  • Represented technology start-up by responding to cease and desist allegations of patent infringement of website code
  • Represented beverage manufacturer in alleged design patent infringement matter to obtain a settlement
  • Obtained settlement for client in ITC investigation involving film and video motion-picture lighting devices
  • Represented recreational product manufacturer in district court and in ITC against allegations of patent infringement by client’s two-stroke engine technologies and obtaining Markman rulings resulting in summary judgment of non-infringement
  • Obtained summary judgment of invalidity for medical device company against patent directed to blood clotting graft products based on patentee failing to properly claim § 120 priority to the earlier application, which was affirmed by the Federal Circuit
  • Obtained summary judgment of patent non-infringement for medical device company against patent to stent-grafts based on the construction of term placed into asserted claims due to specification and prosecution disclaimer, which was affirmed by the Federal Circuit
  • Obtained summary judgment of non-infringement for automobile manufacturer against patent directed to dual injection technology
  • Obtained cancellation of allegedly infringed patent claims directed to HVAC motors for client manufacturer via inter partes review in the PTAB
  • Obtained cancellation of allegedly infringed patent claims directed to catalytic converter technologies for automobile manufacturer via inter partes review in the PTAB
  • Obtained settlement and denial of a preliminary injunction against a client in alleged misappropriations of trade secrets related to antiballistic fabric technologies
  • Co-author of an amicus brief on the appropriate standard of review for extrinsic evidence findings during district court Markman hearings related to patents on ground-fault interruptor technologies

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