Biographical Information
Joel Miller has practiced law for over thirty years, specializing in patent, trademark, copyright, unfair competition, and antitrust law. Following graduation from law school, Mr. Miller served as a patent examiner in the U.S. Patent and Trademark Office, examining patent applications in the fields of telemetry, digital display systems, and computers. He also served as patent counsel and counsel for the Kearfott Division of the former Singer Company, an aerospace division and military subcontractor within the Government Products Group of Singer, handling patent matters, licensing, trade secret and export issues, and employment-related litigation. Prior to establishing his solo practice in 1991, Mr. Miller was associated with the law firm of Weil, Gotshal & Manges, and worked on a variety of patent, trademark, and antitrust matters.
While serving as in-house counsel, Mr. Miller undertook pro bono assignments in the municipal courts of Passaic County, New Jersey. As counsel for the defense, he tried numerous driving-while-intoxicated cases and a variety of motor vehicle and criminal matters.
Prior to graduation from law school, Mr. Miller held several engineering positions, designing and testing ground-based avionics systems for Aerocom, Inc., Coral Gables, Fla.; participating in contract management and design of the ARSR-3 long-range radar for the Federal Aviation Administration, Washington, D.C.; and overseeing the design, fabrication, and installation of a pilot precipitator at a coal-burning power plant for Research-Cottrell, Inc., Manville, N.J. He has also worked as a bench technician (testing and alignment of high-frequency crystal filters), a draftsman, and as a licensed broadcast engineer (WEEX and WJRH, Easton, PA).
Joel Miller frequently participates in national, state, and local bar associations, presenting legal educational programs and serving in a leadership capacity. In addition to traditional speaking engagements, Mr. Miller has chaired and developed clinical trial advocacy programs under the auspices of the American Bar Association (ABA) (please see programs and presentations below). At present, he is active in a number of committees in the ABA and the American Intellectual Property Law Association (AIPLA), focusing upon the question of patentable subject-matter eligibility and technology-related legal issues (please see leadership positions below).
Mr. Miller is active in a number of community groups, including amateur radio organizations, community orchestras (violinist), and regional hiking and outdoor organizations. Previously, he was a member of two wilderness search-and-rescue and high-angle rescue teams. As an amateur radio operator (Extra Class amateur radio license W2TQ), Mr. Miller frequently participates in public service and emergency-preparedness events, and has organized and managed tactical communications systems for large-scale public events.
Education
J.D., 1978, University of Miami, Coral Gables, Florida
B.S.E.E., 1975, Lafayette College, Easton, Pennsylvania
Bar Admissions
Member of the District of Columbia, New Jersey, and New York Bars.
Admitted to practice before the U.S. Patent and Trademark Office.
Professional Activities
Programs and Presentations
“Don’t Lose Your Appeal! Learn about the New Ex Parte Rules,” American Intellectual Property Law Assoc. (online program), Jan. 18, 2012.
“Appellate Advocacy and Practice before the USPTO Board of Patent Appeals and Interferences: How to draft a persuasive and compliant appeal brief,” N.J. Intellectual Property Law Assoc. Electronics, Telecom, and Software Patent Practice Update, New Brunswick, N.J., Nov. 9, 2011; also presented at the American Intellectual Property Law Assoc. 2011 Annual Meeting, Washington, D.C., Oct. 2011.
“What you have to prove at the PTO: Burdens of proof during patent examination and standards of review during appeal to the BPAI and the courts,” ABA Section of Intellectual Property Law 26th Annual Intellectual Property Law Conference, Arlington, Virginia, Apr. 2011.
“The U.S. Supreme Court’s Decision in Bilski v. Kappos: The ongoing controversy over what may be protected by a patent and the broader implications of the debate,” N.J. State Bar Assoc., Internet and Computer Law Committee, New Brunswick, N.J., Jan. 20, 2011.
“What to do about Section 101?,” American Intellectual Property Law Assoc. 2010 Annual Meeting, Washington, D.C., joint meeting of the Education, Patent Law, and Patent Litigation Committees, Oct. 22, 2010 (speaker, moderator, and organizer).
“Anatomy of an Infringement Claim: Analyzing and Responding to a Letter Asserting Trademark or Patent Infringement,” an interactive workshop, ABA Section of Intellectual Property Law 25th Annual Intellectual Property Law Conference, Arlington, Virginia, Apr. 2010.
“Foreign Filing Licenses, Secrecy Orders, and Export Controls: Pitfalls for the Unwary,” American Intellectual Property Law Assoc. 2009 Annual Meeting, Washington, D.C., Oct. 15, 2009.
“Anatomy of a Trademark Infringement Claim: Analyzing and Responding to a Claim Letter,” an interactive workshop, N.J. Trademark Counsel, Basking Ridge, N.J., Sept. 30, 2009.
“Patentable Subject Matter after In re Bilski,” ABA Section of Intellectual Property Law 24th Annual Intellectual Property Law Conference, Arlington, Virginia, Apr. 2009.
“In re Bilski – Is your client’s method of doing business patentable?,” N.J. State Bar Assoc., Internet and Computer Law Committee, New Brunswick, N.J., Jan. 14, 2009.
“International Intellectual Property,” Nat’l Contract Management Assoc., Montclair, N.J., Nov. 18, 1998.
“Website Development Agreements: Allocating Rights and Obligations,” N.J. State Bar Assoc. 1998 Annual Meeting, Atlantic City, N.J., May 15, 1998.
“Justice and Jurisdiction along the Information Highway: Does the Internet have a Long Arm?,” Trademark Luncheon Club, West Orange, N.J., Oct. 9, 1996, and 1997 N.J. State Bar Assoc. Annual Meeting, Atlantic City, N.J., May 16, 1997.
“Computer Law: Substantive Legal Issues and Jurisdiction,” 1996 N.J. State Judicial College, Teaneck, N.J., Nov. 26, 1996.
“Patent Protection for Computer Software: Has Anything Changed at the Patent Office?,” N.J. State Bar Assoc., Computer-Related Law Committee, New Brunswick, N.J., Mar. 30, 1995.
“Insurance Coverage for Intellectual Property Disputes: Relief for Beleaguered Defendants,” Trademark Luncheon Club, West Orange, N.J., Nov. 9, 1994.
“Copyright Basics – A Brief Overview of Copyright Law as it relates to Computers and Computer Technology,” N.J. State Bar Assoc. 1994 Annual Meeting, Atlantic City, N.J., May 14, 1994.
Program Chair, ABA/USTA National Institute on Trademark Trial Advocacy, Tarrytown, N.Y., June 1993.
Program Chair, Protecting the Computer Environment: Database Privacy and Computer Facility Security, N.J. State Bar Assoc. Computer-Related Law Committee, New Brunswick, N.J., Feb. 25, 1993.
Program Chair, ABA National Institute on Trademark Trial Advocacy, Boston, Nov. 1986.
Program Chair, ABA-AIPLA National Institute on Patent Trial Advocacy, Washington, D.C., Nov. 1984.
Associations and Leadership Positions
Fellow, American Bar Foundation (New York State chapter).
Chair, Inter Partes Review Subcommittee, USPTO Affairs (Post Grant and Inter Partes) Committee, ABA Section of IP Law, 2011–date.
Co-Chair, Patents and Legislative Affairs Subcommittee, Electronic and Computer Law Committee, AIPLA, 2008–date.
Chair, Patentable Subject Matter Subcommittee, Software and Cloud Computing Committee, ABA Section of IP Law, 2008–11.
Co-Chair, § 101 Subcommittee, Patent Law Committee, AIPLA, 2009–11.
Member, Task Force Subcommittee on Business Method Patents, ABA Section of IP Law, 2009–10.
Master, Essex Inn of Court, Justice William A. Brennan, Jr. Chapter, Newark, N.J., American Inns of Court (1997–2000).
Chair, Computer-Related Law Committee, N.J. State Bar Assoc., 1993–95.
International Trademark Association (Project Editorial Board, 1997–99).
Institute of Electronics and Electronics Engineers.
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National Institute on Appellate Advocacy (ABA), 1984.
Diploma, National Institute for Trial Advocacy, Mid-Atlantic Regional, 1983.
Prior Affiliations
Patent Examiner, U.S. Patent and Trademark Office, Washington, D.C.
The Singer Company, Kearfott (Aerospace) Division, Little Falls, N.J.
Weil, Gotshal & Manges, New York, N.Y.
Community Affiliations
Westchester Emergency Communications Association
New Providence Amateur Radio Club
American Radio Relay League
Livingston Symphony Orchestra
Essex County Summer Players Orchestra
Adirondack Mountain Club
Appalachian Mountain Club
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A description of the practice in .pdf form may be downloaded here.