Bart Eppenauer rejoined Shook after serving as Microsoft’s Chief Patent Counsel for more than a decade. In that role, Bart led the Patent Group in the Legal and Corporate Affairs department, where he developed Microsoft’s patent portfolio of more than 35,000 issued patents worldwide and managed a team of more than 100 patent professionals offering patent counseling and product development support across all of Microsoft’s business and research divisions. Under Bart’s guidance, Microsoft’s high-quality patent portfolio resulted in an extremely successful IP licensing program and received top rankings in IEEE Spectrum, BusinessWeek and The Patent Board.

Bart’s practice at Shook focuses on strategic IP counseling and analysis, pre-litigation and litigation strategy, complex multilateral IP transactions and license agreements and IP policy advocacy. Bart has extensive experience in IP transactions and scenarios, including product development agreements; patent licensing (including patent pools); open source software licensing, usage and contributions; industry standards usage, participation and contributions; strategic alliances, joint development and collaboration agreements; and due diligence involving IP asset evaluation. He works closely with government and judicial officials, academics and industry leaders worldwide on IP policy issues, including ongoing judicial and legislative patent reform efforts.

Bart is a frequent author and speaker on a range of IP issues, with particular expertise in patent subject matter eligibility of computer implemented inventions. He has been published on the IAM blog and had the most-read stories of both 2014 and 2015. He has also been published in Inside Counsel, Patently-O, Managing Intellectual Property and IP Watchdog.

Publications and Presentations

Software Patent Eligibility: How to Articulate a Patent-Worthy Invention, CPA Global Webinar, Dec. 14, 2017.

Bart Eppenauer, Federal Circuit Vacates Judge Gilstrap's Controversial Venue Test, Cloud IPQ: Enhancing Your Cloud IP IQ, Sep. 21, 2017.

Bart Eppenauer, Sling TV Sued on Use of H.264 Standard in Streaming Media Devices, Cloud IPQ: Enhancing Your Cloud IP IQ, Sep. 15, 2017.

Bart Eppenauer, Four Reasons Why Trump's Pick for the Next USPTO Director Matters, Morning Consult, Jan. 11, 2017. 

Key CAFC decisions confirm software is patentable in post-Alice world, says Microsoft’s former patent chiefIAM, October 31, 2016.

USPTO and Section 101: New Examiner Guidelines, IPO's IP Chat Channel, May 18, 2016.

Cuozzo at the Supreme Court – Determining the Future Value of Inter Partes Reviews at the Patent Office, IP Watchdog, Apr. 24, 2016.

Section 101 – Pivotal Moment for Clarity on Patent Subject Matter Eligibility, PatentlyO, Apr. 21, 2016.

Patent reform issues are back in action again at the U.S. Supreme Court, Inside Counsel, Feb. 19, 2016.

Emerging Antitrust Regulation of Intellectual Property Licensing in Asia, IP Watchdog, Aug. 16, 2015.

Beware the IP non-assert clause in AWS cloud service agreement, warns ex-Microsoft patent chief, IAM, July 12, 2015.

Litigation abuse driving negative sentiment around patents, IP Watchdog, Mar. 5, 2015.

America Must be the Leader in Patenting Innovations, Including Software, IP Watchdog, Mar. 2, 2015.

DDR Holdings – Federal Circuit Forges a Sensible Path on Software Patents, PatentlyO, Dec. 14, 2014.

Software patent owners have nothing to fear from the CAFC's Ultramercial decision, says Microsoft's former chief patent counsel, IAM, Nov. 21, 2014.

They Tried to Make Me Go to PTAB..., Managing Intellectual Property, Oct. 10, 2014.

The US has not come close to abandoning software patents, former Microsoft chief patent counsel tells IAM, IAM, Oct. 3, 2014.

Panel Discussion of the Supreme Court Decision in Alice v. CLS Bank, Washington State Patent Law Association, Sep. 17, 2014.

Are Digital Transmissions an "Article" Under Section 337? Looking Ahead to the Federal Circuit, Intellectual Property Owners Association Webinar, May 8, 2014.

Understanding the Patent License, Washington State Bar Association Intellectual Property's IP Advanced Licensing: State of the Art CLE (Seattle, Wash.), Feb. 4, 2014.

Bart Eppenauer, First-Inventor-To-File: Considerations From An In-House Patent Counsel Perspective, AIPLA, May 2013.