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Gregory M. Stone
Partner
7 Saint Paul Street
Baltimore, MD 21202-1636
Phone: 410.659.6402
Fax: 410.234.2314
gstone@wtplaw.com
Awards

Greg Stone is a partner and serves as Co-Chair of the firm’s Technology and Intellectual Property Practice Group.  With over 20 years of experience in the patent and general intellectual property fields, including his tenure as a United States Patent Examiner in the general mechanical and biomedical device arts, Greg has developed significant substantive depth and a wealth of experience that have earned him a reputation as a trusted, practical, and highly effective intellectual property advisor to clients ranging in size from startups to Fortune 500 companies.  He has been recognized over multiple years as one of the “Best Lawyers in America” and as a Maryland “Super Lawyer,” and is very active in the regional technology community, including by serving as a board member of the Maryland Tech Council.  In serving as Co-Chair of the firm’s Technology and Intellectual Property Practice Group, he has helped to lead that group to recognition as one of only twenty-four firms nationwide that have been ranked in the top tier for Technology by U.S. News & World Report.

As a degreed Mechanical Engineer (having previously worked in that capacity with the Department of the Army), Greg is licensed to practice before the United States Patent and Trademark Office.  His practice is focused on client counseling, domestic patent prosecution and foreign patent prosecution through the Patent Cooperation Treaty (“PCT”) and foreign associate counsel, global strategic intellectual property portfolio development, intellectual property due diligence in complex merger and acquisition and other transactions, licensing and other intellectual property transactions, and litigation.  The intellectual property matters that Greg has managed for clients have covered diverse technologies, including medical devices and processes, computer software and general information technology,  manufacturing equipment and processes, cyber security, clean energy, consumer products, construction materials and processes, communications technologies, electronics and electromechanics, fluid mechanics, materials sciences, chemistry, and general mechanics.  His clients recognize and appreciate his practical, no-nonsense approach to strategic intellectual property management, including not only managing sophisticated patent dockets and working to maximize commercial value through patent coverage of key aspects of his clients’ technologies, but also by determining when alternatives to patent protection are most appropriate.

Intellectual Property & Technology

  • Advising clients on all aspects of their business relating to their technology and intellectual property issues
  • Counseling clients on the development and deployment of strategic, company-wide intellectual property management strategies, including monetization, enforcement, licensing, and litigation strategies
  • Prepare formal legal opinions on patentability, validity and invalidity, infringement and non-infringement, and unenforceability

Patents

  • Counsel clients on the development and deployment of internal invention policies and procedures
  • Counsel clients on the development and deployment of global patent filing and prosecution strategies
  • Prepare, file, and prosecute patent applications, reissue patent applications, and reexaminations before the U.S. Patent and Trademark Office; conduct examiner interviews; file and manage appeals to the Board of Patent Appeals and Interferences
  • Conduct and manage U.S. and international patent prosecution for multiple clients

Copyrights

  • Representation of individual artists in procuring copyright protection
  • Assisting clients with the development of internal copyright use and protection policies

Trademarks, Domain Names and Other Brand Protection

  • Counsel clients on the development of trademark usage policies and procedures
  • Prepare, file, and prosecute applications for trademark registration before the U.S. Patent and Trademark Office

Trade Secrets

  • Counsel clients on the development and deployment of internal trade secret recordation and maintenance policies
  • Develop and provide counsel on confidentiality / non-disclosure agreements and employee invention agreements and policies

Intellectual Property Litigation

  • Representation of clients before Federal Courts and administrative agencies in patent and trademark infringement matters, including varied U.S. District Courts, the U.S. Court of Appeals for the Federal Circuit, the International Trade Commission, and the U.S. Patent and Trademark Office
  • Conduct pre-litigation infringement investigations; work with technical experts in complex patent litigation; development of case strategy and substantive briefing on key infringement and validity issues
  • Representation of clients in patent interference proceedings
  • Preparation and issuance of cease and desist letters
  • Drafting and negotiation of settlement agreements

Transactional Intellectual Property

  • Manage intellectual property due diligence in complex merger and acquisition and other commercial transactions
  • Prepare and negotiate transactional intellectual property agreements, including license agreements, development agreements, joint venture agreements, purchase and supply agreements, confidentiality and non-disclosure agreements, and employment and termination agreements

Licensing & Technology Transfer

  • Representation of major university technology transfer offices in patent prosecution matters
  • Representation of clients in technology monetization through strategic licensing

International Practice

  • Representation of domestic clients ranging in size and technology in the development of global intellectual property portfolios
  • Serving as special U.S. counsel for foreign clients seeking intellectual property protection in the U.S.

International Intellectual Property

  • Representation of domestic clients ranging in size and technology in the development of global intellectual property portfolios
  • Serving as special U.S. counsel for foreign clients seeking intellectual property protection in the U.S.

Technology Start-ups

  • Work with early stage companies in the development of low cost intellectual property protection strategies to ensure key protection is secured prior to public use or disclosure of the technology
  • Assist entrepreneurs in the development of their own knowledge base of key issues relating to the protection and commercial exploitation of their intellectual property

Product Design, Manufacturing and Distribution

  • Representation of clients in the strategic development of patent and trademark portfolios
  • Representation of clients in the preparation and negotiation of manufacturing, distribution, joint development, and other agreements

Advertising and Promotion Law

  • Assisting clients with the development of policies and procedures for trademark usage
  • Assisting clients with avoidance of claims of “greenwashing” for products having alleged environmental benefits

Computer Software & Hardware

  • Representation of clients in the development of global patent protection for computer implemented inventions
  • Representation of clients in the preparation and negotiation of software development and license agreements

Internet and E-Commerce

  • Assisting clients with the development of website policies, including privacy policies, terms of use, and conducting website audits.

Cyber Security, Data Management & Privacy

  • Assist clients in the development of intellectual property protection strategies for new technologies in the fields of secure data communications, secure networking, and secure data management

Clean Energy Technology

  • Assist clients in the development of intellectual property protection strategies for new technologies in the fields of clean energy technology, including solar power systems and devices, wind-powered devices, wave energy devices, hybrid automotive transmissions, and biodegradable products

Green Building and Sustainability

  • Representation of clients developing high efficiency environmental control systems

 

Recognitions

Listed in Maryland Super Lawyers, 2012-present

Listed in Best Lawyers in America, 2009-present; 2014 Baltimore Litigation - Patent "Lawyer of the Year"; 2018 Baltimore Intellectual Property Law "Lawyer of the Year"

Recognized in Chambers USA: America's Leading Lawyers for Business, published by Chambers and Partners, 2017

2016 Best Lawyer's "Lawyer of the Year" in the areas of Litigation - Intellectual Property, Litigation - Patent, Patent Law, Technology Law and Trademark Law

Publications & Presentations

Co-Presenter: American Intellectual Property Law Association Webinar, "Proper Combination of References for Obviousness (KSR v. Teleflex Progeny)​"

Presenter: National Manufacturing Week 2007, Chicago, IL

Presenter: E-nnovations 2007 Mid-Atlantic Entrepreneurship Conference, Anne Arundel County, MD

Guest Lecturer: University of Maryland, Baltimore County Graduate Business Program

Guest Lecturer: Loyola College, Fellows MBA Program, Joseph A. Sellinger, S.J., School of Business & Management

Guest Lecturer: TechCenter at the University of Maryland, Baltimore County

Guest Lecturer: Silver Spring Innovation Center

Guest Lecturer: The Maryland Technology Development Center

Memberships & Activities

Board Member: Maryland Tech Council

Member: Intellectual Property Owners Association and Corporate Intellectual Property Management Committee

Member: American Society of Mechanical Engineers

Member: Maryland State Bar Association

Member: American Bar Association ; Intellectual Property Law Section

Member:  American Intellectual Property Law Association

Education

  • University of Baltimore School of Law (J.D. 1996) cum laude
  • University of Maryland (B.S. 1992)Mechanical Engineering