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Robert J. Toth

Associate
+1.412.355.8382
Fax +1.412.355.6501

Robert Toth is a registered patent lawyer in the Pittsburgh office and concentrates his practice on intellectual property issues in the oil and gas, filtration, nanotechnology, material science, chemical, biochemical, and biomedical sectors. Mr. Toth’s practice primarily focuses on the preparation and prosecution of patent applications, but also involves IP licensing, IP due diligence, patent invalidity, clearance and freedom-to-operate analyses, and patent litigation. In addition, Mr. Toth works on patent portfolio development, trademark, and trade secret counseling.

Mr. Toth’s experience spans a number of diverse technological arts and bridges both large and small IP clients. He has prepared and prosecuted patent applications for large corporate clients in the oil and gas, filtration, nano-materials, polymer materials, organic coatings, metallurgy and metal refining, chemical and biochemical processing, manufacturing, medical device, and consumer products industries. Mr. Toth has also prepared and prosecuted patent applications for university, start-up, and small entity clients in the oil and gas, filtration, nanotechnology, medical device, and green technology arts.

In addition to patent preparation and prosecution, Mr. Toth has worked on both ex parte and inter partes reexamination proceedings before the United States Patent and Trademark Office and assisted in the management of European counsel during patent opposition proceedings before the European Patent Office. He has also worked with clients on the development of trade secret protection programs, invention harvesting, IP aspects of corporate due diligence, and patent litigation.

Mr. Toth also counsels clients regarding intellectual property issues involved in government contracting, including compliance with contractual and regulatory obligations respecting intellectual property developed under federal procurement contracts, technology investment agreements, R&D contracts, grants, and cooperative agreements implicating the Federal Acquisition Regulations (FAR), the Defense Federal Acquisition Regulations Supplement (DFARS), Department of Energy intellectual property regulations, and other federal agency regulations.

Professional Background

Mr. Toth was a registered patent agent at K&L Gates from 2006 to 2008 where he worked with the intellectual property practice group on patent preparation, prosecution and related projects. Before joining K&L Gates, Mr. Toth was a research assistant in the Vascular Bioengineering Laboratory at the University of Pittsburgh, Department of Surgery, Division of Vascular Surgery Research, which is part of the McGowan Institute for Regenerative Medicine, a joint program of the University of Pittsburgh School of Medicine and the University of Pittsburgh Medical Center (UPMC). Mr. Toth's work in the Vascular Bioengineering Laboratory involved research projects on vascular perfusion, modeling, and tissue engineering.

  • Defended patents directed to inorganic composite tooling materials in inter partes reexaminations and reissue prosecutions for a global specialty metals company.
  • Defended patents directed to lead alloys and electrochemical metal refining equipment in ex parte reexaminations for a global metal recycling, recovery, and refining company.
  • Prepared successful requests for ex parte reexamination of competitor’s patents directed to polyethylene materials for a global polymer company.
  • Provided invalidity, freedom-to-operate, and due diligence analyses related to biopolymers and fermentation production for an agricultural processing company.
  • Provided invalidity, freedom-to-operate, and due diligence analyses related to polyethylene production for a global polymer company.
  • Provided advice and counseling regarding compliance with contractual and regulatory obligations related to intellectual property developed under government contracts for a global specialty materials company.
  • Prepared and prosecuted patent applications related to oil and gas extraction technology for various clients, including oil country tubular goods, proppant formulations, and other fracking and extraction technology.
  • Prepared and prosecuted patent applications directed to oil/water separation membranes and filter technology for a global specialty materials company.
  • Prepared and prosecuted patent applications directed to crossflow filtration technology for a small entity client.
  • Prepared and prosecuted patent applications directed to microbial inactivation filter technology for a small entity client.
  • Prepared and prosecuted patent applications directed to reverse osmosis filters for a small entity client.
  • Prepared and prosecuted patent applications directed to steels, titanium alloys, and exotic alloys, including production and processing methods for a global specialty metals company.
  • Prepared and prosecuted patent applications directed to industrial and automotive OEM and after-market coatings, including low VOC waterborne coatings, UV curable coatings, and anti-microbial coatings for a global specialty materials company.
  • Prepared and prosecuted patent applications directed to lead alloys and electrochemical metal refining for a global metal recycling, recovery, and refining company.
  • Prepared and prosecuted patent applications directed to nano-lubricant compositions for a university spin-off company.
  • Prepared and prosecuted patent applications directed to metal and alloy cutting tools and systems for a global specialty metals company.
  • Prepared and prosecuted patent applications directed to transcutaneous medical instrumentation for a small entity client.