B.A. Psychology & Political Science
Minor: Computer Science
University Of Illinois-Urbana Champaign
University Of Illinois Chicago School Of Law
U.S Patent and Trademark Office
Eric Sutton focuses his practice on securing valuable patent protection for critical software-related technologies, as well as providing advice on patent risks, license negotiations, and other risk reduction strategies. Eric brings a unique perspective from his nine years as in-house patent counsel at a Fortune 100 software company, where he secured and managed patent assets and directly advised business executives on patent risks. Prior to going in-house, Eric spent six years in private practice at a well-respected Bay Area IP boutique, drafting over a hundred software-related patent applications and prosecuting hundreds more for a wide range of top software companies.
As in-house counsel, Eric oversaw patent matters for technologies relating to artificial intelligence, cloud systems management, log analytics, Internet of things, self-service automation, Java, human capital management, social media, marketing and advertising, health, utilities, retail, and hospitality. He negotiated patent licenses for tens of millions of dollars, analyzed and advised on risks involving thousands of patents and thousands of competitor patents, spoke on behalf of his employer on patent quality and patent eligibility, and led projects to analyze and improve patent quality, raise patent allowance rates, reduce patent expenses, and otherwise improve patent strategies for all of the company’s cases.
In addition to his roles as outside counsel and in-house counsel, Eric is entering his eleventh year of serving as an adjunct professor at Chicago-Kent College of Law, where he teaches Software Patents according to the textbook he first published in 2016. Eric has also lectured on legal process automation at Stanford, and spoken globally on data-driven patent quality, most notably at Patinex, IPO, and various times at the USPTO. Some of Eric’s more interesting patent studies have been published on Patently-O, IPWatchdog, and his own blog, Patnotechnic.
Eric has always had a passion for improving the efficiency and consistency of high-quality legal work. While in-house, Eric developed a patent process automation tool, involving thousands of coordinated flows, to automate thousands of hours of patent admin time and hundreds of hours of attorney time. This patent process automation tool allowed the Fortune 100 technology company to bake new efficiencies into the patent prosecution pipeline and provide new patent services that were not previously available to executives, inventors, in-house attorneys, in-house and outside admin, and outside counsel.
As an innovation strategist both as in-house and outside counsel, Eric has advised his clients on white space that is available for patenting as well as evolving technologies and synergies that are applicable to their business. In this role, Eric served as a co-inventor on at least nineteen granted U.S. patents, several pending U.S. patent applications, and several foreign patent assets, covering technology areas of artificial intelligence, self-service automation, cloud configuration, management, and analytics, Java language constructs, social relationship management, video game state management, and marketing. For over a thousand other patent matters that Eric managed or prosecuted without contributing as an inventor, Eric’s extensive innovation experience allowed him to ask the right questions that draw out critical and valuable aspects of the core innovation from the software developers, accounting for modern technologies, common design variations, and trends in the industry.