About Yakov

Comprehensive and strategic IP protection and enforcement

Yakov Sidorin has contributed to the development of optical sciences and technologies as an engineer, scientist, chief technology officer and director of research and development at established companies and several startups, one of which delivered products to market and was acquired. He now aids clients in various areas of intellectual property (IP) counseling and guides his clients in developing comprehensive strategies in patent prosecution, licensing and transfer of IP into market, opinion work, infringement analysis and valuation of IP, to name just a few. Yakov represents a variety of clients, including:

  • Academic institutions
  • Multinational corporations
  • Mid-size companies
  • Startups

Experience in Action

  • Counsels clients on patent and trademark protection and licensing. Yakov's clients greatly benefit from his diverse and deep technical experience and intimate understanding of the legal aspects of IP protection in opto-electronics (semiconductor manufacturing, integrated optics, fiber optics,  lasers, optical components and systems,  thin-films, coatings, UV lithography), medical imaging systems and processing (optical, ultrasound, CT, MRI, X-ray), microwave imaging, acoustics, electrical engineering (transmission of electrical power, signals, data), micro-electro-mechanical systems (MEMS), systems for navigation, ophthalmological devices, mechanical and automotive engineering (autodimming mirrors, valves, battery bushings, engines), voice-recognition systems, computer storage systems, sports equipment and data processing algorithms.
  • Works with clients on IP asset management counseling. Yakov develops and implements strategy for IP portfolios as business tools. He also develops and implements various IP asset management tools, including business-oriented IP strategic plans and educational processes/tools to communicate the strategic plans to client personnel. In addition, he provides technical personnel and business development professionals with practical sessions, courses and development of protocols on capturing existing IP and developing new IP.

Successes

  • Acted as the primary counsel responsible for creating and managing patent portfolio of a U.S. subsidiary of a multinational corporation specializing in consumer electronics, optics and imaging products, including organization of brainstorming sessions that produced countless invention disclosures addressing technological transition to a new generation of semiconductor processing technologies.
  • Ongoing support of a U.S. manufacturer of scientific instruments for materials and molecular research to define the IP scope of business development associated with spinning small start-up companies and to assess the value of IP associated with acquisition of startup companies.

Professional Recognitions

  • Recipient of USPTO Patent Pro Bono Achievement, 2020

Professional & Civic Activities

  • Arizona Technology Council, Board of Directors, 2019-2021
  • SPIE Photonics West - Conference Program Committee, member, 1998-present
  • Reviewer of articles submitted to Journal of Optical Engineering and Topical Editor for two of its special issues
  • Reviewer of technical publications for Optics and Photonics News, Optics Letters, Journal of Applied Physics, and Optics Express
  • Named inventor on 16 issued U.S. and foreign patents

News & Insights

Education

Bar Admissions

Court Admissions

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