About Us
Attorney – Matthew Ma, JD, PhD
Matthew is author of the book: Fundamentals of Patenting and Licensing for Scientists and Engineers, and two IEEE courses on patent protection. He advises clients on patent matters with a multifaceted, deep understanding of the value of patents, combining his business, technical, and legal acumen.
Matthew brings over 30 years of experience in technology development, patent drafting and prosecution, intellectual property management, and patent acquisition. His practice concentrates on patent drafting and prosecution of utility and design patents, patentability and freedom-to-operate studies, trademark registration, IP due diligence, IP litigation support, IP licensing and acquisition. His academic training in electrical and computer engineering, coupled with prior industry experience as a scientist and engineer, affords him an in-depth understanding of the complex technologies behind his clients’ innovations.
Prior to founding Princeton IP Law, Matthew held various roles in the intellectual property field, including eight years of private practice in several international and Am Law 100 law firms and 9 years of in-house experience in technology and licensing companies. Matthew started his career as a research engineer, and worked in software and networking technologies at Panasonic Research Laboratory in the U.S. for 11 years. In his in-house roles at SRI International and Allied Security Trust, Matthew also served as Director of Intellectual Property, overseeing patent prosecution, patent acquisition and patent monetization. He is an inventor on 14 U.S. granted patents.
His multi-disciplinary career path has allowed him to obtain experiences in all phases of a patent’s life cycle as both an inventor and as an attorney. He has authored two books on patenting for scientists and engineers and delivered numerous lectures on patent strategy and innovation. These experiences shaped his commitment to helping inventors and patent owners to truly appreciate the value of their patent assets and succeed in their businesses.
Education
• Tsinghua University, Beijing, BE, Electrical Engineering
• State University of New York (SUNY) Buffalo, MS, Electrical and Computer Engineering
• Northeastern University Boston, PhD, Electrical and Computer Engineering
• Seton Hall University School of Law New Jersey, JD
Experience – Patent Prosecution
Matthew specializes in drafting and prosecuting software patents with complex algorithms. He keeps abreast of the latest case laws in software patents and advises clients on securing software patent protection while avoiding risks of rejections under abstract ideas. He drafted and successfully prosecuted hundreds of US patent applications and has experiences in a wide range of technologies such as:
• Artificial intelligence and machine learning in various applications
• Semiconductor and circuit design, DRAM
• Medical devices
• Mechanical devices
• Blockchain, data security
• Image and audio signal processing, document analysis, machine vision
• Natural language processing
• Cloud computing and virtual machines
• VR/AR/MR
• Consumer electronics, home networking
• Telecommunication, e.g., mesh networks, Femtocell networks, UPnP, SIP and 5G
• Television broadcasting, MPEG codec, 2D barcode
• Standard-essential patent (SEP) related technologies such as UPnP/DNLA, OSGi, high efficiency video coding, and MPEG 7 compact descriptors for video analysis (CDVA)
Experience – IP Monetization and Litigation Support
• Conducted IP due diligence in international merger & acquisition transactions in the consumer electronics domain.
• Assisted clients in monetizing patent assets, including mining portfolios, developing licensing and sales programs, identifying infringing parties, and developing evidence of use claim charts.
• Counseled on freedom to operate (FTO) and design around in various stages from pre-product release to pre-litigation.
• Developed over 100 claim charts for Fortune 500 high-tech companies in image processing and telecom technologies in support of patent infringement actions.
• Conducted non-infringement / invalidity studies in litigation support.
• Worked as director of patent strategy and operations at patent acquisition company Allied Security Trust and closed the company’s first deal and several thereafter.
Experience – Start-ups Counseling
• Drafted and reviewed IP terms in consultant agreements, service agreements, licensing agreements, and IP transfer agreements.
• Assisted clients in searching and selecting of trademarks and obtaining trademark registrations with the US Patent and Trademark Office.
• Advised a start-up company in semiconductor and artificial intelligence space in developing a sophisticated patent portfolio involving a combination of hardware and software technologies, which led to successful exit for the company.
• As former director of IP at SRI International, a Silicon Valley based innovation company, managed the company’s patent portfolio in support of spin-offs of the company, including SIRI, Inc.
• Served as volunteer attorney in legal clinics for nonprofit and small businesses, advising on IP strategies.
Bar Admissions
• New York
• New Jersey
• Pennsylvania
• Washington
• U.S. Patent and Trademark Office
• U.S. District Court, Western District of Pennsylvania
Representative Publications
• Book: Ma, Fundamentals of Patenting and Licensing for Scientists and Engineers, World Scientific, 1ST & 2ND editions (2009, 2015)
• Book: Ma and Kwok, Handbook of Best Practices in Intellectual Property Management (in Chinese), Enterprise Management Publishing House, 2011 (Foreword by Lipu Tian, then-director of State IP Office)
• Book: Jiang, Ma, Chen, Mobile Multimedia Processing: Fundamentals, Methods, and Applications, Springer, 2010
• Book: Uchyigit and Ma, Personalization Techniques and Recommender Systems, World Scientific, 2008
• Legal paper: Ma and Zheng, Is Patent Marking the Patent Owner’s Right or Statutory Duty?, China IP Magazine, July-September 2021, pp. 116-123, Electronic Issue 101, Feb 2022
• IEEE eLearning Library Curriculum: Ma, Fundamentals of Patent Protection for Engineers and How to be a Prolific Inventor, 2011
• Patents: inventor of 14 U.S. granted patents
• Papers: authored over 30 refereed journal and conference publications in technical fields
Representative Teaching Engagements
• Lecturer: a week-long course “Intellectual Property Rights: Protection, Enforcement and Risks” at the Fifteenth International Summer School on Advanced Computer Architecture and Compilation for High-Performance and Embedded Systems, July 14-20, 2019, Fiuggi, Italy.
• Lecturer, UC Berkeley and Tsinghua University: undergraduate and graduate course “Patent Strategy and Innovation,” School of Economics & Management, Tsinghua University, 2011-2013.
• Chief Advisor and Lecturer, Intellectual Property to Office of Enterprise Management Job Training & Certification, Chinese Enterprise Confederation from 2011-2014.
Activities and Interests
• Seattle MentorX, advisor and mentor
• Chinese Institute of Engineers (CIE), former president (2022) and Chair of the board (2023) of CIE-Seattle Chapter
• IEEE society, senior member since 2000
• International Journal of Pattern Recognition and Artificial Intelligence, Associate Editor, 2005-2021
• Pro bono attorney in incorporation/dissolution of non-profit organizations, 501(c)(3) filing with the IRS
Languages
• English
• Chinese Mandarin
100 Overlook Center, 2nd Floor
Princeton, NJ 08540
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