Frank A. DeLucia, Jr.

Partner
New York
767 Third Avenue, 23rd Floor
New York, NY 10017
D: 212.223.7240
Contact My Assistant
Julie Harting
D: 212.223.6528

Education

New York University - Leonard N. Stern School of Business
   Executive Master of Business Administration, 2017

Quinnipiac University School of Law
   J.D., cum laude, 1995
   Quinnipiac College Law Review
   Phi Delta Phi (legal honor fraternity)

Boston University College of Engineering
   B.S. Electrical Engineering, 1989
   Order of the Engineer

Bar and Court Admissions

State of New York, 2000
State of Connecticut, 1996
U.S. Court of Appeals for the Federal Circuit
U.S. District Courts for the Southern and Eastern Districts of New York, 2002
U.S. Patent and Trademark Office

Professional Affiliations

NYIPLA Board of Directors
   Board Liaison, Publications Committee
   Board Liaison, Inventor of the Year Award Committee

Awards & Recognition

Recipient of the City Bar Justice Center's 2014 Jeremy G. Epstein Award for Outstanding Pro Bono Service

Legal 500 in Patent Prosecution: Utility and Design - 2008-2009, 2012-2015

Patent Buddy as one of the Top Patent Prosecutors nationally in the Computer, Electrical, Software and Business Methods areas for 2011

Publications & Speaking

Speaking Engagements

Presenter, PTAB Proceedings in a Post-Aqua Landscape: What Patent Owners Need to Know, July 2018

Fundamentals of Patent Prosecution: A Boot Camp for Claim Drafting & Amendment Writing, Practicing Law Institute, June 2016

Fundamentals of Patent Prosecution: A Boot Camp for Claim Drafting & Amendment Writing, Practicing Law Institute, June 2015

Post Grant PTO Proceedings Conference, American Conference Institute, March 25-26, 2015

One-Day Patent CLE Seminar, NYIPLA, January 16, 2014

Patent Drafting Considerations in Light of Some Notable Court Interpretations of the Written Description Requirement, 16th Annual Advanced Patent Prosecution Workshop, July 2007

Recent Developments in Inter Partes Reexamination Practice, NYIPLA's 19th Annual Joint Seminar Program, Patent Practice Update, May 8, 2003

Publications

NYIPLA Endorses Patent Office Change to Phillips Claim Construction Standard, IPWatchDog, August 3, 2018

Patent Examiner Interviews, co-authored by Luciano Ricondo and Frank DeLucia, Jr., Lexis, February 2018

U.S. High Court Limits Patents Based on the 'Laws of Nature,' China Daily, July 11, 2012

Patent Specification Drafting, in Fundamentals of Patent Prosecution 2006: A Boot Camp for Claim Drafting & Amendment Writing, Practicing Law Institute, August 2006

Federal Circuit Leaves Open the Question of Which Maternity Standard Should Apply in Inequitable Conduct Determinations, Corporate Counsel, October 2003

Teaching

Practicing Law Institute (PLI)
   CLE instructor

Community

Varick Street Incubator at New York University
   Volunteer Mentor

Futures and Options
   Board of Directors

Frank’s practice focuses on patent prosecution, contested proceedings before the USPTO, strategic international management of patent portfolios, invalidity and non-infringement opinions, and client counseling. In addition to his patent practice, Frank has experience in prosecuting trademarks.

Possessing an Executive MBA, mentoring start-ups, and being a former senior electrical engineer at Yale University School of Medicine, Frank understands business and the value of innovation, and their intersection with the law.

Highly skilled in patent prosecution, Frank has successfully prosecuted thousands of patent applications.  He also has extensive experience in specialized prosecution such as reissues, reexaminations, and accelerated examinations. Frank has successfully conducted interference proceedings before the USPTO, as well as numerous inter partes review proceedings where the USPTO adopted every proposed ground of rejection he proposed. 

Frank’s technical experience spans the electrical, software, business method, and mechanical arts, including computer hardware and software, optics, telecommunications, optical networks, Electronic Design Automation (EDA), music software, financial services, check imaging, electronic payments, back-office electronic banking transactions, medical devices, medical imaging, healthcare processing, dental equipment and processes, image and digital signal processing, electronic security, compressions techniques, e-commerce, cellular and mobile telephony, flat panel displays, electrical power systems, integrated circuits, semiconductor devices and manufacturing processes, automotive equipment, endoscopes, microwave devices, laser printers and other electro-mechanical devices.

Frank is a regular CLE instructor for the Practicing Law Institute (PLI). He also serves as board member of the New York Intellectual Property Law Association (NYIPLA), which is a recognized leader in intellectual property education, professional development, networking, and in influencing the field of intellectual property law in general.

Acting on a strong belief in the value of public service, Frank volunteers as a mentor at the Varick Street Incubator at New York University, and also has served on the board of directors of Futures and Options, an organization which provides work-readiness experience to under-served youths from challenged backgrounds.

Although not ready to give up his day job, Frank is an avid musician, studies flamenco guitar with a maestro in Spain, enjoys downhill skiing, art, and dabbles in archery, sailing and horseback riding.