Douglas A. Gastright

Associate

With nearly 10 years of experience as a software developer, Doug brings a practical and business-centric approach to the preparation and prosecution of patent applications in a variety of software- and technology-related fields including blockchain, artificial intelligence, machine learning, virtual reality, augmented reality, additive manufacturing, and automation. Doug’s practice focuses on patent law, but he also combines his software development experience with broad experience in reviewing, drafting, and negotiating technology transactions to aid clients in protecting and leveraging their software products, innovations, and related services. Doug’s in-house software development experience at The Kroger Co. and General Electric has given him insight into the protection needs of Fortune 500 companies. He has also developed a passion for working with early-stage technology companies, where he counsels clients on how to best position IP and contract rights for growth, investment, and acquisition. Doug is active in the entrepreneurial community as a longtime mentor and Executive in Residence for groups including Cintrifuse and the OCEAN accelerator.

A frequent author of articles surrounding Supreme Court and Federal Circuit opinions, Doug has also developed a number of documents and applications to aid in his practice, including a guided workflow for recalculating Patent Term Adjustment and recapturing lost patent term for clients, an intellectual property review and audit form to help clients identify valuable IP, and software applications to automate several time consuming aspects of patent drafting.

Education & Admissions

Education

  • University of Kentucky College of Engineering

    (B.S., Computer Science 2005)

  • Northern Kentucky University, Salmon P. Chase College of Law

    (J.D., summa cum laude, 2013)

Admissions

  • State of Ohio
  • U.S. Patent & Trademark Office

Experience

REPRESENTATIVE EXPERIENCE

  • Advises clients on the protection of software and other intellectual property through patents, trademarks, copyrights, trade secrets, and technology agreements.
  • Provides contract drafting, review, and negotiation for complex technology and intellectual property agreements, including: end-user license agreements; software-as-a-service (SaaS), cloud service, consulting, and other service agreements, both as standalone transactions and under master service terms; website terms of service and privacy policies; support and maintenance agreements; service level agreements; beta license agreements; OEM, reseller, and distribution agreements; and open source licenses.
  • Navigates complex patent eligibility questions under 35 USC 101 in view of CLS v. Alice and related case law to secure patent protection for software implemented inventions.
  • Interfaces directly with inventors and software owners to identify key points of novelty within software inventions and hidden risks in software transactions.
  • Drafted and filed U.S. patent applications for more than 200 software and mechanical inventions, with a particular emphasis on additive manufacturing, artificial intelligence, medical devices, and virtualization of 3D spaces.
  • Assists clients in filing foreign patent applications directly and through the patent cooperation treaty, coordinated with foreign counsel throughout prosecution of foreign applications.
  • Assists clients with patent prosecution including examiner interviews, office action responses, appeals, and post-issuance issues.
  • Provided litigation support for patent infringement and software transaction litigation, including management and coordination of electronic discovery database, research, and deposition support.
  • Developed software applications to assist with PAIR based patent analytics and claim drafting.
  • Provides mentoring and education within startup communities and accelerators, including UpTech, INKUBATOR, Ocean, Cincy Tech, SoCap Accelerate, and Cintrifuse.

Publications & Presentations

Publications

  • “Software APIs Protected by Copyright but Questions on Fair Use Remain,” Ohio State Bar Association, Intellectual Property News (September 2014)

Presentations

  • NKU Cybersecurity Symposium – Managing Risk in the Age of the Smart Toaster (2018)

Involvement

PROFESSIONAL AFFILIATIONS

  • American Bar Association
  • Ohio Bar Association
  • Cincinnati Bar Association
  • Cincinnati Intellectual Property Law Association

COMMUNITY INVOLVEMENT

  • Executive in Residence at Cintrifuse LLC (Mentor, 2017-present)
  • Pro Bono representation of Ronald McDonald House in software development transactions (2018)
  • Ocean Accelerator (Mentor, 2016-present)
  • Leadership Council on Legal Diversity (Mentor, 2014-present)
  • SoCap Accelerate (Mentor, 2019-present)
  • Law and Leadership Institute (Mentor and Coordinator, 2014-2015)
  • University of Cincinnati Pro Bono Patent and Trademark Clinic (Mentor, 2017-present)
  • Wallace Woods Neighborhood Association (Web Developer and Administrator, 2010-present)

Honors

  • Northern Kentucky University, Salmon P. Chase College of Law, J.D., summa cum laude, ranked #1 in class