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Nathaniel W. Lucek

Partner, Intellectual Property & Technology Practice Leader
Related Info
  • New York
  • Massachusetts
  • U.S. Patent and Trademark Office

Clarkson University, B.S. 

Franklin Pierce Law Center (now University of New Hampshire School of Law), J.D., cum laude

Nathaniel assists clients with intellectual property, contract, and corporate matters. Much of Nathaniel’s practice focuses on patent law, including the preparation and prosecution of patent applications, due diligence projects, and opinion work. Nathaniel also regularly advises clients on intellectual property strategy issues. He has supported patent portfolio development for entities ranging from Fortune 500 corporations to universities and startups. His areas of experience include semiconductor capital equipment; semiconductor and solar cell designs; ion implantation; optical and imaging systems; industrial chemicals; superconductors; nanomaterials; silicon wafer production; metal alloys; biomedical devices; touch screens and displays; and image processing algorithms.

Nathaniel also has experience helping European companies expand into the United States, handling general corporate and complex intellectual property matters. Specifically, Nathaniel has helped startups and mid-sized corporations from Belgium, the Czech Republic, Finland, France, Germany, Iceland, Hungary, Latvia, and Lithuania grow their U.S. businesses or develop their global patent portfolios. Besides helping obtain patent protection, his work with European companies includes corporate formation, sales agreements, joint development agreements, and intellectual property licenses.

Nathaniel is a member of the firm’s startup and cleantech practices, where he frequently counsels emerging companies about intellectual property, contract, and corporate issues.

Prior to joining Hodgson Russ, Nathaniel spent more than five years as in-house intellectual property counsel at a semiconductor capital equipment manufacturer in Massachusetts. While there, his responsibilities included patent preparation and prosecution, patent and trademark portfolio management, patent reexamination, patent infringement matters, due diligence projects, negotiating license agreements, managing government contracts, and opinion work. Nathaniel also managed aspects of a multibillion-dollar acquisition.

In addition to his work with clients, Nathaniel also is a co-host of the Hodgson Russ LLP podcast, “The Semi Interesting Podcast.” As a host, Nathaniel takes his experience in semiconductor manufacturing to highlight legal issues in the global semiconductor industry. In each episode, he is joined by attorneys and executives to highlight some of the issues facing the industry, as well as to offer some practical takeaways.

Honors

  • Listed, Upstate New York Super Lawyers Rising Stars (Intellectual Property) 2021 - 2023

  • Editor's Award, New Hampshire Bar Journal, 2007
  • At Franklin Pierce Law Center, Nathaniel was lead articles editor for IDEA: The Intellectual Property Law Review. 

In the News

Publications

Blog Posts

Nathaniel also contributed to Hodgson Russ's Clean and Green Law blog. His blog entries include:

  • Keeping Your Application Aloft: Fighting Obviousness Rejections at the Patent Office
    JANUARY 3, 2017
  • Fighting Patent Application Rejections with Market Information: More Than Just "Nobody Else Sells This"
    FEBRUARY 19, 2016
  • Do the Evolution: Five Ways to Adapt Your Patent Strategy
    DECEMBER 14, 2015
  • An Inventor Walks Into a Bar: Risks of Filing a “Bar Napkin” Provisional Patent Application
    OCTOBER 6, 2015
  • Going Global: Tips on Building a Patent Portfolio Outside the United States
    AUGUST 27, 2015
  • Using Utility Models to Protect your Intellectual Property in Taiwan
    JUNE 9, 2015
  • Teamwork Can Benefit Your Company’s Research, but Verify Inventors on any Resulting Patent Application
    APRIL 28, 2015
  • Patenting Your Basement Fusion Reactor: Utility Requirements under U.S. Patent Law
    JANUARY 16, 2015
  • Speeding Construction of Your Company’s ‘Great Wall’: Protecting Green Technology in China with Utility Models
    OCTOBER 24, 2014
  • Take Off Every Zig: The Risk in Tesla’s 'All Our Patent Are Belong to You' Message
    JULY 11, 2014

The Semi Interesting Podcast

Presentations & Events

Professional Associations

  • Speaker & Mentor: Baltic-Armenian @ Jacobs (BAJ) Accelerator
  • Co-Chair of Intellectual Property, Computer, and Entertainment Law Committee, Bar Association of Erie County
  • Former Chair of the Law School Outreach Program Subcommittee, American Intellectual Property Law Association

Community & Pro Bono

  • Secretary General, Belgian-American Chamber of Commerce
  • Former Shakespeare in Delaware Park Board of Directors (2016-2022)