Erika Harmon Arner

Partner

Erika Arner practices patent prosecution management, client counseling, and litigation, with an emphasis on electronic technology, computer software, and the Internet. Ms. Arner has helped clients of all sizes to establish and grow patent portfolios, design and implement procedures to protect intellectual capital, and formulate company-wide IP strategies and policies.

Ms. Arner is a well-known authority in the area of business method patents and patent-eligibility jurisprudence. She represented the petitioners before the U.S. Supreme Court in Bilski v. Kappos, co-authoring the successful petition for certiorari and the petitioners' briefs to the Court. She has also advised clients on issues related to patentable subject matter before the U.S. Court of Appeals for the Federal Circuit, U.S. district courts, and the U.S. Patent and Trademark Office.

Ms. Arner has provided opinions on patentability, infringement, and validity of patents, and drafted or overseen the drafting of more than 150 patent applications for business method, electrical, telecommunications, and software-based technologies. She is a frequent author and lecturer on business method and computer-related patents.

Highlights

• Co-authored a petition for a writ of certiorari and petitioners' merits briefs in Bilski v. Doll and co-authored amicus curiae brief to the Federal Circuit in In re Bilski.
• Managed prosecution and strategy for patent portfolio of over 400 U.S. and foreign patent applications for software and services company.
• Coordinated strategy for large governmental agency in building patent portfolio of over 100 patent applications in one year's time.
• Prepared patent policy and procedures, conducted in-house patent committee meetings, and supervised prosecution of patent portfolios for clients in gaming, online advertising, business consulting, government contracting, and software industries.
• Faculty member, IBC Intellectual Property Law Summer School regarding The State of Business Method and Software Patents in the U.S. and IP Valuation, in 2007 and 2008.

Professional Recognition

• Recognized by Law360 as a rising star in the field of intellectual property, 2011.

Professional Activities

• Intellectual Property Owners Association (vice chair, Software and Business Method Patents Committee, 2009-2010)
• American Bar Association, (Intellectual Property Section, annual review vice chair, Division I - Patents, 2010)
• Virginia Bar Association
• American Intellectual Property Law Association

Select Publications

• Coauthor. "Golan v. Holder: Potential Shift in Judicial Scrutiny," Law360, Dec. 19, 2011.
• Coauthor. "How Will Patent Reform Affect the Software and Internet Industries?" The Computer & Internet Lawyer, Dec. 2011.
• Coauthor. "Treatment of Business Method Patents in Pending Patent Reform Legislation: Bilski Backlash?" BNA's Patent, Trademark & Copyright Journal, July 15, 2011.
• Coauthor. "High Court IP Roundup — Last Session, and What's Next," Law360, Sept. 21, 2010.
• "Practical Considerations for Working with Business Method Patents," Electronic and Software Patents Law and Practice, 2007-2010.
• Coauthor. "U.S. Supreme Court Decides Fate of Three Key § 101 Cases," June 29, 2010.
• Coauthor. "Bilski and Beyond the Uncertain State of Patent-Eligible Subject Matter in the United States," Managing Intellectual Property Chinese Edition, June 2010.
• Coauthor. "The Uneasy Future of Software and Business-Method Patents," SD Times, March 24, 2010.
• "Ten Reasons the Supreme Court Should Take In Re Bilski," Patently-O, April 1, 2009.
• Coauthor. "Patent Practice in the Wake of In Re Bilski," IPO Daily News, March 6, 2009.