D. Joseph English
Partner
Duane Morris LLP
505 9th Street, N.W., Suite 1000
Washington, DC 20004-2166
USA
Phone: +1 202 776 5228
Fax: +1 202 478 0667
Email:
DJEnglish@duanemorris.com
D. Joseph English practices in the areas of intellectual property law and litigation, including patents, trademarks and copyrights with particular emphasis in the acquisition and litigation of intellectual property rights in a variety of technical arts, including discharge lighting, thin film coating and metal working arts and in the television industry.
Prior to entering private practice, he served as a nuclear submarine officer in the U.S. Navy. Mr. English is registered to practice before the United States Patent and Trademark Office and admitted to practice in Virginia and various federal courts. A member of the American Intellectual Property Law Association, Mr. English is a graduate of the Columbus School of Law of The Catholic University of America and a graduate of the United States Naval Academy (B.S., mechanical engineering).
Representative Matters
- Counsel to a manufacturer in obtaining summary judgment of non-infringement of one patent and invalidity of a second patent for metal decking. Successfully opposed the appeal to the Court of Appeals for the Federal Circuit. Obtained settlement client found favorable regarding its counterclaims for unfair competition against plaintiff.
- Counsel to a manufacturer in the granting of a TRO, preliminary and permanent injunctions, and an award of damages against an ex-employee accused of theft of trade secrets and breach of employment contract.
- Counsel in obtaining a favorable settlement in a patent and trade dress infringement action.
- Counsel as registrant in a cancellation proceeding based on priority before the Trademark Trial and Appeal Board.
- Counsel as defendant-counterplaintiff in obtaining a jury verdict of trademark infringement by plaintiff. Created precedential law on trademark use and abandonment in the Fourth Circuit Court of Appeals.
- Manage the worldwide patent programs for clients in various technologies including metal halide discharge lighting, thin film coating, and metal building components. Management of the patent programs includes the drafting and prosecution of patent applications in the U.S. and throughout the world, employee and non-disclosure agreements, opinions related to validity and infringement of patents, and general counseling.
- Counsel to a television network in the management of its worldwide trademark and copyright program, including opinions regarding the availability of marks for use and registration, the filing and prosecution of applications to register marks in the U.S. and foreign countries, registration of copyrights, acquisition of rights for production and distribution of television programs, and merchandising.
Professional Activities
- American Intellectual Property Law Association
- Alexandria Businessman's Association
- Virginia State Bar
Admissions
- U.S. Patent and Trademark Office
- Virginia
- U.S. Court of Appeals for the Fourth Circuit
- Supreme Court of the United States
- U.S. District Court for the Eastern District of Virginia
- Supreme Court of Virginia
Education
- Columbus School of Law of The Catholic University of America, J.D., 1998
- United States Naval Academy, B.S.M.E., 1986
Experience
- Duane Morris LLP
- Partner, 2002-present - Carter, Ledyard & Milburn, Washington, D.C.
- Counsel, 2000-2001 - Rogers & Killeen, Alexandria, Virginia
- Partner, 1998-2000
- Associate/Patent Agent, 1995-1998 - United States Navy
- Nuclear Submarine Officer, 1986-1994
