McKool Smith hires former USPTO acting general counsel

A former acting general counsel of the US Patent and Trademark Office (USPTO) is set to join McKool Smith as a principal in its IP practice.

Nicholas Matich, who served as acting general counsel between March and November this year, will join the firm at the beginning of January 2021, based in the Washington, DC office.

During his time with the USPTO, Matich supervised the provision of legal advice and litigation on IP and administrative matters for the agency. He also supervised more than 130 attorneys and support staff of the USPTO's office of the general counsel.

In November this year, David Berdan, who most recently served as general counsel and compliance officer of gambling company Gaming Arts, was appointed as the USPTO’s new general counsel.

David Sochia, McKool Smith’s managing principal, said: “We are thrilled to have Nick join the firm. He obviously has a wealth of experience at the USPTO, which is an important venue for our clients and our practice before the Patent Trial and Appeal Board.

“He also has significant appellate and administrative law experience and will be instrumental in helping our clients navigate regulatory changes and advance their IP monetisation and protection strategies.”

Prior to working at the USPTO, Matich was deputy general counsel at the office of management and budget (OMB) within the executive office of the President. There, he oversaw attorneys advising on the legal issues affecting the agency and supervised OMB’s legal review of significant regulatory actions by federal agencies.

“McKool Smith is at the top of the list when you consider preeminent trial firms,” said Matich. “The firm’s reputation and track record of success in high-stakes IP disputes is truly exceptional, and it remains on the forefront of cutting-edge litigation, particularly related to disputes involving standard-essential patents and fair, reasonable, and non-discriminatory licensing matters.”

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