Joshua Charles Harrison

Dr. Harrison represents clients in intellectual property legal matters, focusing on patent preparation, prosecution, licensing, post-grant proceedings such as inter-partes review (IPR), pre-litigation, opinions, and litigation.

Practice Areas

Dr. Harrison is a highly experienced patent attorney who provides high-quality preparation and prosecution of U.S. Patent applications and manages the acquisition of related foreign patent rights and intellectual property licensing.

Dr. Harrison assists clients in intellectual property licensing negotiations and related patent analyses and transactions.

He provides right-to-use / patent clearance investigations and analyses & opinions regarding patent validity, infringement, and essentiality to standards.

Dr. Harrison also represents clients in intellectual property disputes, including pre-litigation counseling and representation, patent litigation and litigation support, alternative dispute resolution (e.g., mediation, arbitration), post-grant proceedings such as inter-partes review (IPR), and patent reexamination requests and proceedings.

Representative Legal Experience

As a Partner at BHW Law, Dr. Harrison has prepared and successfully prosecuted high quality and enforceable U.S. patent applications, and evaluated or asserted patents in a wide variety of electrical, mechanical, and biomedical fields (e.g., magnetic recording heads, information storage devices, and related technologies such as data compression, dental implants, ophthalmic surgical devices, vehicle accessories, therapeutic aids, testing and metrology apparatuses, sports equipment, etc.).

He has successfully represented Fortune 500 and smaller clients in dozens of intellectual property disputes, including co-representation in several major patent litigation matters. Dr. Harrison was formerly an In-house Patent Attorney at Western Digital Corp. While there he represented the company in several I.P. licensing and co-development agreements managed the successful preparation and prosecution of dozens of patent applications and assisted with the oversight of patent litigation matters.

Dr. Harrison began his Intellectual Property career as a Litigation Associate at Irell & Manella, LLP. There he was a subordinate member of a leading and renowned patent litigation team.

Dr. Harrison is also very experienced in managing the acquisition of related foreign patent rights for his clients.

He has assisted clients in intellectual property licensing negotiations and related patent analyses and transactions and

provided right-to-use / patent clearance investigations analyses & opinions regarding patent validity, infringement, and essentiality to standards.

He also has represented clients in intellectual property disputes, including pre-litigation counseling and representation, patent litigation and litigation support, alternative dispute resolution (e.g., mediation, arbitration), post-grant proceedings such as inter-partes review (IPR), and patent reexamination requests and proceedings.

Technical Experience

• R&D Manager, Seagate Technology

• Assoc. Prof. (Engineering), Univ. of Queensland

• Engineer, Applied Magnetics Corp., and IBM Corp.

Military Service

• 23 years total service in US Marine Corps Reserve & US Army Reserve

Publications

• “A Recent Patent Class on the Scope of IPR Estoppel at the PTAB”, Journal of Business and Technology Law, Vol. 14., No. 1, pages 35-48 (2018)

• “Raising Healthy Patents”, New Matter, State Bar of California, Vol. 39, No. 3, pages 14-18 (2014)

• “Attracting the World’s Policemen to Protocol I Additional to the 1949 Geneva Conventions”, U.S. Air Force Academy Journal of Legal Studies, Vol. 12, pages 103-137 (2003)

• “On the Convergence of U.S. and Australian Patent Law”, Melbourne Journal of Int. Law, Vol. 14., No. 1, pages 35-48 (2001)

• Author of 19 publications in refereed scientific/engineering journals

• Named inventor on ten issued US patents