Gregory M. Stone

Gregory M. Stone

PARTNER
gstone@wtplaw.com
BALTIMORE
T: 410.659.6402
F: 410.234.2314



Mr. 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, he 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.  Mr. Stone 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), Mr. Stone 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 Mr. Stone 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.

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"; 2020 Litigation - Patent “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
 

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
  • Best Lawyers Designation
  • Chambers and Partners Designation

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

PRESENTATIONS & PUBLICATIONS

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

ARTICLES

Defend Trade Secrets Act (DTSA) Signed into Law, May 11, 2016

On May 11, 2016, President Obama signed into law the Defend Trade Secrets Act (DTSA) creating a cause of action under federal law for trade secret misappropriation which previously had been governed by state common law and each state’s adoption of the Uniform Trade Secrets Act.   The law took effect immediately upon signing.

NEWS

Chambers Honors Whiteford in 11 Practice Areas

Whiteford, Taylor & Preston is pleased to announce that Chambers and Partners has once again ranked the firm highly in its 2019 list of leading firms and business lawyers.

57 WTP Attorneys Listed in Best Lawyers in America 2019, Four Named "Lawyer of the Year"

57 lawyers from Whiteford, Taylor & Preston have been selected by their peers for inclusion in The Best Lawyers in America® 2019 (copyright 2018 by Woodward/White, Inc., of Aiken S.C.). The lawyers selected are based in the firm’s Delaware, Maryland, Virginia and Washington offices. Client comments are posted on the U.S. News & Best Lawyers web site.

59 WTP Attorneys Listed in Best Lawyers in America 2018, Two Named "Lawyer of the Year"

59 lawyers from Whiteford, Taylor & Preston have been selected by their peers for inclusion in The Best Lawyers in America® 2018 (copyright 2017 by Woodward/White, Inc., of Aiken S.C.). The lawyers selected are based in the firm’s Maryland, Washington and Virginia offices. Client comments are posted on the U.S. News & Best Lawyers web site, at bestlawfirms.usnews.com.

In addition, two lawyers were selected as “Lawyer of the Year” for their particular areas of practice.


Whiteford, Taylor & Preston and 29 Lawyers Honored by Chambers and Partners

Whiteford, Taylor & Preston is pleased to announce that Chambers and Partners has once again ranked the firm highly in its 2017 list of leading firms and business lawyers. This year’s recognition includes a record 29 attorneys in 4 states, the District of Columbia and Afghanistan. 


59 Whiteford, Taylor & Preston Attorneys Listed in Best Lawyers in America, 2017, Eight Named as "Lawyers of the Year"

Fifty-nine lawyers from Whiteford, Taylor & Preston have been selected by their peers for inclusion in The Best Lawyers in America® 2017 (copyright 2016 by Woodward/White, Inc., of Aiken S.C.). The lawyers selected are based in the firm’s Maryland, Washington and Virginia offices.

In addition, eight lawyers were selected as “Lawyers of the Year” for their particular areas of practice. 


63 Whiteford, Taylor & Preston Attorneys Listed in Best Lawyers in America, Four Named as "Lawyers of the Year"

Sixty-three lawyers from Whiteford, Taylor & Preston have been selected by their peers for inclusion in The Best Lawyers in America® 2015 (copyright 2014 by Woodward/White, Inc., of Aiken S.C.). The lawyers selected are based in the firm’s Maryland, Washington and Virginia offices.

In addition, four lawyers were selected as “Lawyers of the Year” in the Baltimore region for their particular areas of practice.


Whiteford, Taylor & Preston and Six Partners Named as "IP Stars" by Managing Intellectual Property

Whiteford, Taylor & Preston is pleased to announce that Managing Intellectual Property has given the firm’s Maryland Intellectual Property practice its highest rating and has singled out six partners for individual recognition in Maryland. 

In their commentary, the editors noted that the firm is “highly respected” and that the IP lawyers in the group “handle a split of contentious and non-contentious matters crossing over patent trademark and copyright matters.”


61 Whiteford, Taylor & Preston Attorneys Listed in Best Lawyers in America; Nine Named as "Lawyers of the Year"

Sixty-one lawyers from Whiteford, Taylor & Preston have been selected by their peers for inclusion in The Best Lawyers in America® 2014 (copyright 2013 by Woodward/White, Inc., of Aiken S.C.). The lawyers selected are based in the firm’s Maryland, Washington and Virginia offices, including the firm's new Roanoke office.

In addition, nine lawyers were selected as “Lawyers of the Year” in their jurisdictions and areas of practice.


Sixty-Four Whiteford Attorneys Named Super Lawyers and Rising Stars in Maryland, Delaware, Virginia

Whiteford, Taylor & Preston is pleased to announce that 64 of its attorneys are listed among the 2013 Super Lawyers and Rising Stars in three states.

The firm is particularly proud of the young lawyers who are recognized as “Rising Stars”; the four partners who are listed in the Top 100 in Maryland – Edward Buxbaum, Edwin Fee, William Ryan, and Dwight Stone; and the 16 who are named for the first time this year.


60 Whiteford, Taylor & Preston Attorneys Listed in Best Lawyers in America Five Named as "Lawyers of the Year"

Sixty lawyers from Whiteford, Taylor & Preston have been selected by their peers for inclusion in The Best Lawyers in America® 2013 (copyright 2012 by Woodward/White, Inc., of Aiken S.C.).

This represents an increase of seven over last year.  The lawyers selected are based in the firm’s Maryland, Washington and Virginia offices.

In addition, five lawyers were selected as “Lawyers of the Year” in their jurisdictions and areas of practice.


Forty-Six Whiteford, Taylor & Preston Attorneys Named Super Lawyers and Rising Stars in Maryland; Five in Maryland Listed in “Top 100”

Whiteford, Taylor & Preston is pleased to announce that 46 of its attorneys are listed among the 2012 Maryland Super Lawyers and Rising Stars.

The firm is particularly proud of the five who are listed in the Top 100 in Maryland – Edward Buxbaum, Edwin Fee, Paul Nussbaum, William Ryan, and Dwight Stone. Selection of the Top 100 lawyers in a jurisdiction is strictly based on the highest scores in the Super Lawyer judging process, and Whiteford is one of the two firms with the most names on the list.

Whiteford, Taylor & Preston Elects Five New Partners

Whiteford, Taylor & Preston L.L.P. is pleased to announce that five attorneys have been elected partners. The firm congratulates John B. Gontrum, Gary W. Kuc, Dino C. La Fiandra, Frank J. Mastro, and Gregory M. Stone.