Nicholas Matich is a principal in McKool Smith’s intellectual property (IP) practice, representing a broad array of clients in IP disputes both as plaintiffs and defendants and advises clients on IP strategy. Nick frequently speaks and is quoted in the media on US IP policy and litigation. Prior to joining the firm, Nick served as Acting General Counsel of the United States Patent and Trademark Office (USPTO) where he represented the agency before the Federal Circuit and U.S. Supreme Court.
During his time with the USPTO, Nick supervised the provision of legal advice and litigation on intellectual property (IP) and administrative matters for the agency, including providing legal advice on patent, trademark, and copyright matters. His responsibilities included supervising more than 130 attorneys and support staff of USPTO’s Office of the General Counsel, including the Office of the Solicitor which litigates IP matters on behalf of the USPTO. Nick also coordinated with the Department of Justice, Department of Commerce, and other agencies in developing the government's position on major IP cases before the Supreme Court and Courts of Appeals. Prior to assuming the role of Acting General Counsel, Nick served as Senior Legal Advisor in the Office of the USPTO Director, in which capacity he personally briefed and argued a number of high-profile stakes appeals on behalf of the USPTO.
Prior to working at the USPTO, Nick served as Deputy General Counsel at the Office of Management and Budget (OMB) within the Executive Office of the President. At OMB, he oversaw attorneys advising on the full range of legal issues affecting the agency and supervised OMB’s legal review of significant regulatory actions by federal agencies. Nick also concurrently served as a presidential appointee on the governing body of the Administrative Conference of the United States (ACUS), an independent executive branch agency charged with advising other federal agencies on administrative law and processes.
Before joining OMB, Nick worked in the White House as Special Assistant to the President and Associate Staff Secretary, where he coordinated the vetting of executive orders, speeches, legislation, signing statements, memoranda, and other documents for the president. Prior to his service in the government, Nick practiced at several prominent law firms and worked as a law clerk for the Honorable Richard C. Wesley of the United States Court of Appeals for the Second Circuit.
Nick earned his bachelor’s degree summa cum laude from the University of Notre Dame and his law degree from the University of Virginia School of Law, where he was Senior Editor of the Virginia Law Review. Before attending law school, Nick served in the United States Navy as a Surface Warfare Officer and made several overseas deployments.
- Ericsson v. Samsung – Represented Ericsson in FRAND patent infringement litigation on cellular technology, including obtaining a preliminary injunction against a foreign anti-suit injunction.
- Edible Arrangements v. 1-800-Flowers.com – Representing Edible Arrangements in trademark infringement action arising from a competitor’s use of its trademarks in search engine advertising.
- Nokia v. Lenovo – Represented Nokia in RAND patent infringement litigation regarding video compression technology in district court and the ITC
Experience with the USPTO
- AbbVie Biotechnology, Ltd. v. United States, No. 17-2304 (Fed. Cir.) – Argued and briefed appeal from PTAB’s determination of unpatentability of claims for dosing regimens for the rheumatoid arthritis treatment HUMIRA®. The Federal Circuit affirmed the PTAB decision in full.
- Kaken Pharmaceutical Co., Ltd., et al. v. Iancu, No. 18-2232 (Fed. Cir.) – Argued appeal from the PTAB’s determination of unpatentability of claims for the onychomycosis drug JUBLIA®.
- Amgen Inc., et al., v. Iancu, No. 19-2171 (Fed. Cir.) – Briefed appeal from the PTAB’s invalidation of patent claiming methods of manufacturing biologics.
- HTC Corp., et al. v. Ericsson Inc., et al., No. 19-40566 (5th Cir.) – Argued and drafted briefs for the United States in appeal of standard essential patent licensing dispute.
- In re: Thomas, No. 19-2053 (Fed. Cir.) – Argued and briefed appeal in defense of USPTO’s § 101 rejection of patent application for computer networking technology.
- In re: Boloro Global Ltd., No. 19-2349 (Fed. Cir.) – Represented USPTO Director in constitutional challenge to the PTAB.
- Arthrex, Inc. v. Simth & Nephew Inc., et al., No. 18-2140 (Fed. Cir. & U.S. Supreme Court) – Represented USPTO Director in constitutional challenge to the PTAB.
Prior Private Practice
- Linde v. Arab Bank, No. 16-2119 (2d Cir.) – Briefed appeal successfully vacating $100 million tort verdict.
- Elenza, Inc. v. Alcon Research Ltd., et al., No. N14C-03-185 (Del. Sup. Ct.) – Successfully represented medical device manufacturer in trade secret dispute regarding ophthalmic implant.
- Dietz v. Bouldin, No. 15-458 (U.S. Supreme Court) – Drafted petition for certiorari and merits briefing regarding jury procedure.
- Advised on and negotiated IP transactions for a professional education company.
- Advised on-line retailer on false advertising and data protection matters.
- Advised trade association of major copyright holders on copyright matter.
Community & Professional Activities
Member, AUTM Public Policy Legal Task Force
Media & Events
- Nick Matich’s comment included in IPWatchdog article “Comments on USPTO Patent Eligibility Study Reveal Stark Contrast in Viewpoints of Some U.S. Patent Stakeholders”10.19.2021
- Nick Matich shared commentary in Managing IP’s article, “The AIA at 10: The Good and Debatably Bad, According To Counsel”10.05.2021
- Nick Matich provided commentary in Bloomberg Law’s article “Biden Signals Shift Toward Tech on Standard Essential Patents”07.27.2021
- Nick Matich quoted in Life Sciences IP Review’s article “Minerva: Less Risk for Inventors, More Work for the Courts”07.20.2021
- Nick Matich provided commentary to Intellectual Property Magazine’s article “Biden’s Executive Order Targets Pay-for-Delay”07.20.2021
- Nick Matich provided commentary in World IP Review’s article “Lawyers Hail USPTO’s Bid to Resolve Patent Eligibility Muddle”07.14.2021
- Nick Matich provided commentary to IPWatchdog’s article “Industry Commenters Say Minerva Ruling is a Win for Employee Mobility”06.30.2021
- Nick Matich provided commentary in World Trademark Review’s article “‘The Second Circuit Got It Right’: FTC Decision Reversed in Trademark Agreements Dispute”06.15.2021
- Nick Matich was quoted in Intellectual Property Magazine's article, "Second Circuit Overturns FTC's 1-800 Contacts Antitrust Verdict"06.14.2021
- Nicholas Matich commented in Managing IP's article "Counsel Split on Whether USPTO's TMA Rules Will Deter Bad Guys"05.27.2021
- Nick Matich provided commentary to Intellectual Property Magazine’s article, “USPTO Issues Proposed Rules to Implement TMA”05.24.2021
- Nick Matich provided commentary to World Trademark Review's article, "USPTO Announces Proposed New Rules; Clubhouse Trademark Infringement Suit; Atari Sues Pixels - News Digest"05.19.2021
- Nick Matich commented in Westlaw Journal Intellectual Property's article, “Supreme Court will limit assignor estoppel, not get rid of it, attorneys say”04.29.2021
- Nick Match quoted in Bloomberg Law article, “PTAB To Use District Court Standard for Indefiniteness”01.08.2021
- Nick Matich provided commentary to the Law360 article, “USPTO Aligns AIA Review Indefiniteness Test With Courts”01.06.2021
- Law360's, "USPTO Says Patent Specification is Evidence, Not Prior Art" (prior to Nick Matich joining the firm)08.19.2020
- Law360's, "HTC, Ericsson Tangle At 5th Circ. Over How To Value Patents" (prior to Nick Matich joining the firm)05.06.2020
- IAM's, "SEP FRAND policy rewrite designed to bring predictability, says senior legal advisor to USPTO head" (prior to Nick Matich joining the firm)01.16.2020
- Law360's, "Fed. Circ. Affirms PTAB Ax of AbbVie's Humira Patent" (prior to Nick Matich joining the firm)01.08.2020
- Law360's, "Full Fed. Circ. Urged By All Sides To Rethink Arthrex" (prior to Nick Matich joining the firm)12.17.2019
- Nick Matich will serve as panelist for policy workshop “Revisiting the USPTO’s Rulemaking Authority After Cuozzo And City Of Arlington”08.30.2021
- Nick Matich served as a panelist for the Federal Circuit Bar Association titled "Dispute Resolution Challenges: Innovation, Self-Help, and Judicial Systems"04.22.2021
Patent Office Practice After the America Invents Act, 23 Federal Circuit Bar Journal 225, 2013
Copyright Preregistration: Evidence and Lessons from the First Seven Years, 55 Arizona Law Review 1073, 2013 (Co-authored)
Forum Domination: Religious Speech in Extremely Limited Public Fora, 98 Virginia Law Review 1149, 2012
J.D., University of Virginia School of Law
- Senior Editor, Virginia Law Review
B.A., summa cum laude, University of Notre Dame
- Phi Beta Kappa
- Hon. Richard C. Wesley, United States Court of Appeals for the Second Circuit
- District of Columbia
- The U.S. Courts of Appeals for the Second, Fifth, Tenth, and Federal Circuits
- The U.S. Patent and Trademark Office for inter partes proceedings
- The U.S. District Court for the Eastern District of Texas