Eric P. Raciti
Eric Raciti focuses his practice on intellectual property counseling, particularly in the fields of alternative energy, medical devices, consumer products, and electromechanical engineering, including robotics and control systems. He has worked with such diverse technologies as cardiac rhythm management and cardiology, electrochemical diagnostics, biomechanics and orthopedics, neuroscience, neuroradiology, biofuels, and computer systems. Mr. Raciti was a resident partner in Finnegan’s European office in Brussels for two years. He also serves as editor-in-chief of Full Disclosure, Finnegan’s patent prosecution newsletter.
Mr. Raciti works with start-up and established companies to develop comprehensive and sophisticated international patent strategies, including strategic patent procurement, portfolio development, competitive intelligence and analysis, patent office procedures, and litigation. Mr. Raciti assists clients to understand the competitive patent landscape surrounding their technologies, and helps identify opportunities to develop and leverage portfolios. He provides freedom-to-operate guidance to clients introducing new products to the market, as well as due diligence for acquisitions representing both buyers and targets, and financing rounds for earlier-stage companies.
Mr. Raciti began his career as a management consultant for a large health insurance company. While attending law school, he worked for five years at the U.S. Patent and Trademark Office (USPTO) as a patent examiner in a medical device art unit. Following his studies for a Masters of Law degree in European Community competition law, he served as an attorney for the commissioner of patents in the USPTO’s Office for Legislative and International Affairs. Before joining Finnegan, Mr. Raciti worked for prominent Boston general practice firms, gaining experience in agreement drafting and corporate transactions involving intellectual property, as well as patent prosecution and strategic IP counseling for major medical device companies.
- Represented Asetek at the PTAB in reversing rejections of Asetek's patent claims in an inter partes reexamination, following successful assertion of the patent by Asetek in federal district court, preserving the patent in full force.
- Counseled IT sector client in combatting importation of knock-off products by multiple competitors.
- Performed competitive IP landscape analyses for prominent companies in the alternative energy and medical device fields.
- Provided comprehensive competitor review for large medical device company involving thousands of patents.
- Provided portfolio development and freedom-to-operate counseling for medical client in crowded and litigious technology field.
- Provided IP legal representation for client in acquisition negotiations with major market player.
- Selected as one of the "Top 100 Clean Technology and Renewable Energy Attorneys" by LMG Clean Technology and Renewable Energy, 2013.
- American Bar Association (vice-chair, Intellectual Property Law Committee of the Tort Trial & Insurance Section, 2010-present; member, Intellectual Property and International Law Sections, 1997-present)
- Licensing Professionals Society Benelux (2013-present)
- American Intellectual Property Law Association (Committees on Patent Law and International Law, 1997-present)
- Boston Patent Law Association (co-chair, International Law Committee, 2014; co-chair, Medical Devices Committee, 2007-2011; Committee on Patent Law, 1997-present)
- The Chartered Institute of Patent Attorneys (foreign member)
- Serves as editor-in-chief for Full Disclosure, Finnegan's patent prosecution newsletter.
- Coauthor. "Where Equivalence Isn't Equivalent: Using 510(k)s in Patent Litigation," Medical Device and Diagnostic Industry, Jan. 3, 2017.
- "Means Plus Function Claiming: What Does It Mean to Be a Means, When Are Means Means, and Other Meaningful Questions,"Landslide, March/April 2016.
- Coauthor. "Only a True Divisional Can Enter the Safe Harbor of 35 U.S.C. § 121," AIPLA Chemical Practice Chronicles, Fall 2015.
- Coauthor. "Why File Design Patents? Modern Uses of a Classic Form of Intellectual Property," Entrepreneur.com, April 30, 2015.
- Coauthor. "When Induced Infringement Under §271(f)(1) Turns into a Party of One: Promega Corp. v. Life Technologies Corp.," AIPLA Chemical Practice Chronicles Newsletter, Winter 2015.
- Coauthor. "IP Landscaping—Creating a Conceptual Fabric of Information," Intellectual Property Today, June 2014.
- Coauthor. "How Design Patents Strengthen a Medical Device IP Portfolio," Medical Design Technology, Nov. 13, 2013.
- Coauthor. "Inter Partes Review: Making Heads or Tails of the 'Reasonable Likelihood of Success' Standard," BNA's Patent, Trademark & Copyright Journal, Oct. 25, 2013.
- Coauthor. "The Not-So-Amazing Grace Period Under the AIA," CIPA Journal, Sept. 2012.
- Coauthor. "Greentech IP Landscaping," Greentech Media, June 30, 2010.