Jonathan Berschadsky

Partner
New York
767 Third Avenue, 23rd Floor
New York, NY 10017
D: 212.223.7241
Contact My Assistant
Frannie Grasso
D: 212.223.7897

Education

Rutgers University School of Law
   J.D. 2000

Boston University
   M.S. Electrical Engineering, 1993
   B.S. Electrical Engineering, 1991

Bar and Court Admissions

Southern District of New York
Eastern District of New York
State of New York, 2001
State of New Jersey, 2000
U.S. Patent and Trademark Office

Professional Affiliations

NYIPLA Patent Law & Practice Committee
   Co-Chair

Awards & Recognition

Recognized in IAM Strategy 300 – The World’s Leading IP Strategists, 2017-2019

Winner of The Burton Awards 2016 Distinguished Legal Writing Award for co-authoring “Is PTAB ‘death squad’ just a myth?”

IP Star, Managing Intellectual Property, 2013-2019

Top Patent Prosecutors, Patent Buddy, 2011-2017

Top New York City Intellectual Property Litigator, Super Lawyers: New York Metro Edition, 2014-2019

Publications & Speaking

Speaking Engagements

“Section 101 - Three Years of Uncertainty”, Moderator, NYIPLA One-Day Patent CLE Seminar, Nov. 16 2017

Fundamentals of Patent Prosecution: A Boot Camp for Claim Drafting & Amendment Writing, Practicing Law Institute, 2010- 2018

PTAB Forum 2016, Managing Intellectual Property, May 12, 2016

The 11th Annual Patents for Financial Services Summit, World Congress, July 23-24, 2014

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

Publications

The Uncertain Future of Laches in Patent Litigation, IPWatchdog, co-written with Jason Dorsky, October 26, 2016

The Patent Trial and Appeal Board Designates Five Decisions as Precendential, Fitzpatrick Case Update, May 9, 2016

Is PTAB Death Squad just a myth?, Intellectual Property Magazine, June 2015

IP Due Diligence: key areas of analysis in biotech and pharma transactions, Financier Worldwide, September 2011

IP risk assessment in corporate M&A, Financier Worldwide, April 2010

Software and Patent Damages for Foreign Sales: Have the District Courts Gone Too Far?, The Computer & Internet Lawyer, July 2004

Current Developments in Business Method Patent Law, E-Commerce Law Journal, September 2001

Jonathan Berschadsky is a Partner at Merchant & Gould’s New York office who focuses his intellectual property practice on complex matters. His 20 years of experience, mixed with a passion for technology and a flair for complex problem-solving, enable him to deliver effective technology and IP agreements, due diligence analysis, opinions of counsel, strategic patent prosecution, IP litigation and so much more.

Partnering With You in All Aspects of Patent Law

Whether he’s litigating a patent that he drafted, counseling on an M&A or portfolio planning, Jonathan delivers a close partnership to each of his clients. He serves businesses, corporations and start-ups in a wide range of industries, including electronics, manufacturing, telecommunications and consumer products.  Some of the technologies he deals with include:

  • Artificial intelligence/machine-learning
  • Audio signal processing
  • Blockchain
  • Cybersecurity
  • Imaging
  • Natural language processing
  • Telecommunications

Regardless of your industry, he’s involved in every aspect of patent law, partnering with you in your success and providing strategic insight and deliverables throughout.

  • In patent prosecution, you receive a valuable asset.
  • Through litigation as a defendant, you receive an efficient resolution and disposition.
  • Through litigation as a plaintiff, you receive a positive result.
  • In transactions, you witness the creation of more business.
  • Through his opinion, you’ll receive a sense of safety, giving you the confidence to move forward.

“Jonathan is a U.S. patent attorney with a brilliant legal mind. He is very business-oriented and he always sees the commercial aspects when he drafts and prosecutes patent applications before the USPTO. He brings a sense of comfort to our mutual clients by collaborating closely with me and keeping me in the loop as cases twist and turn.”

“Jonathan is a very strategic thinker and builds a friendly, positive, and trusting relationship with judges and opposing counsel alike. We have been impressed by his professionalism, legal acumen, and client-focused approach relating to transactional matters as well.”

When involved in drafting patent applications, formulating arguments for high-stakes litigations or sharing his opinions on patent infringement, he never leaves a stone unturned.

Skilled Attorney With a Team Player Mindset

Jonathan focuses on being an invaluable asset to your team, managing everything involved with your patent. He understands that true patent law requires a dedicated team for the best results. If you need trademark work, he has someone to do it. If you need a design patent, he has industrial and mechanical engineers/lawyers and skilled draftspersons ready to handle it.

You have access to the right person for the right matter, every time.

As your supporter, he’ll remain your go-to while ensuring you’re in the best hands and have the best resources at your disposal.

“Jonathan helped us consolidate four different sales contracts into one much stronger one. The terms are better for us and for our clients, saving time and money. He’s incredibly responsive and easy to work with and genuinely cares about our business. I feel like I’ve gained a valuable team member.”

Jonathan is a regular CLE Instructor for the Practicing Law Institute (PLI) and in-house counsel. In his free time, you’ll find him moonlighting as a mixed martial artist or soaring in the hills on his mountain bike.

Do You Need a Strategic Patent Partner? Call Jonathan Today.

When you want a well-rounded intellectual property attorney who will truly partner with you in success, look to Jonathan Berschadsky. To learn more about how Jonathan can serve your company or start-up’s patent and intellectual property strategy, call him today at 212-223-7241 or send him an email.

Representative Cases

Blue Spike, LLC v. Spotify USA Inc. et al. (CDCA). Patent infringement dispute involving  steganographic ciphers and data scrambling.

Dicta-Direct, LLC v. Speech Processing Solutions USA Inc. (GAND). Patent infringement dispute involving speech to text conversion and language translation services.

IPC Systems, Inc. v. Cloud 9 Tech. (D. of Del.). Patent infringement dispute involving web-based trading turrets and their use in trading communication systems as well as misappropriation of trade secrets claims.

Cloud9 Tech. v. IPC Systems (PTAB). CBM and IPR contested proceedings involving specialized communication systems.

CG Tech. Development, LLC, et al. v. DraftKings, Inc. (D. Nev. & D. of Del.). Patent infringement dispute and related IPR contested proceedings involving online contests.

Canon adv. Intellectual Ventures (D. Del). Patent infringement dispute involving various aspects of printer, scanner, digital camera, and Wi-Fi technologies.

Sirona Dental Systems v. Danaher (D. Del). Patent infringement dispute involving CMOS-based digital dental imaging products.

All Media Guide adv. MOAEC (W.D. Wisc.). Patent infringement dispute involving software for managing digital music.

IBM adv. Sky Technologies. Claims of patent infringement, trade secret misappropriation, breach of contract, conversion and unjust enrichment relating to e-commerce software.

Donnelly Corporation v. Johnson Controls, Inc. et al. (W.D. Mich.). Patent infringement dispute involving automotive electrochromic rearview compass mirrors.


MEDIA CENTER

All Media
Press Releases
6/12/19
Jonathan Berschadsky Listed In Iam Strategy 300 Third Year in a Row
Merchant & Gould is pleased to announce for the third year in a row that attorney Jonathan Berschadsky, a partner in the firm’s New York office, has been included in the 2017 edition of IAM Strategy 300 – The World’s Leading IP Strategists.This ...
Press Releases
6/8/18
Jonathan Berschadsky Listed in IAM Strategy 300
Merchant & Gould is pleased to announce that attorney Jonathan Berschadsky, a partner in the firm’s New York office, has been included in the 2018 edition of IAM Strategy 300 – The World’s Leading IP Strategists.This guide lists the individuals ...
Press Releases
3/7/18
Patent Held by Merchant & Gould Client IPC Systems Survives Invalidity Challenges Unscathed
Merchant & Gould is pleased to announce that client IPC Systems, Inc., has emerged victorious in two patent disputes with Cloud9 Technologies.In January 2018, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office denied Cloud9 ...
Press Releases
2/20/18
Merchant & Gould Secures Three IPR Wins at PTAB for Client Askeladden
Merchant & Gould is pleased to announce that New York-based client Askeladden won three inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) last week.A patent quality advocacy group, Askeladden challenged a pair of Purple ...
Press Releases
7/31/17
Jonathan Berschadsky Listed in IAM Strategy 300
Merchant & Gould is pleased to announce that attorney Jonathan Berschadsky, a partner in the firm’s New York office, has been included in the 2017 edition of IAM Strategy 300 – The World’s Leading IP Strategists.This guide lists the individuals ...
Press Releases
6/20/17
Merchant & Gould Grows New York Office with Three Hires
Merchant & Gould is pleased to announce the recent expansion of its New York office upon hiring three new attorneys: two electrical engineering partners, Jonathan Berschadsky and Frank DeLucia, Jr., and an industrial engineering associate, Luciano Ricondo. ...