Stephen T. Schreiner is a partner in Carmichael IP. He focuses on all aspects of intellectual property law, including: Inter Partes Reviews and other post-grant proceedings, reexamination, patent litigation, patent prosecution and portfolio development, counseling and IP due diligence. Steve has significant experience with appeals to the Federal Circuit taken from the PTAB.  Steve has experience in a wide variety of technology spaces including: networks, network security, cryptography, software, digital multimedia content, streaming, signal processing, interactive media, LEDs, fiber optics, the Internet and other areas. Steve also has experience in the FinTech space for technology involving the delivery of financial services and products.

Before joining Carmichael IP, Steve was a partner in an AmLaw 50 firm for many years.
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Before becoming a lawyer, Steve spent eight years working as an engineer for the Department of Navy developing and testing digital signal processing algorithms processing underwater sound signals to detect enemy submarines. He has been recognized as one of the world’s leading IP and patent practitioners by Intellectual Asset Management and The Legal 500. Steve is a frequently published author on developments in patent law including patent eligibility and other topics.

Education

• Georgetown University Law Center, J.D., magna cum laude,1996
• Virginia Tech College of Engineering, B.S. Electrical Engineering, cum laude, 1987
  

Admissions

• State of Virginia
• Virginia

Affiliations

• Virginia State Bar
• District of Columbia Bar
• District of Columbia Bar

presentations

• “PTAB Winning Strategies for Owners and Petitioners” – May 15, 2024, IPWatchdog Litigation Masters 2024
• “Something More: Patent Eligibility Cases Mandating that Claims Must Recite More than a Result” –  October 8, 2020, IPWatchdog CON2020.
• “How to Build a Robust IP Portfolio”, July 25, 2019, Sixteenth Annual Patents for Financial Services Summit (World Congress); New York City (panel moderator).
• “Investigate the Impact of the Oil States Decision”, July 25, 2018, Fifteenth Annual Patents for Financial Services Summit (World Congress); New York City (panel moderator).
• “Conflicts in Patent Prosecution:  Hot Topics”– June 6, 2017, Strafford Publications (instructor).
• “Best Practices for Managing Risk through Intellectual Property Indemnification Provisions” by Stephen Schreiner and Eleanor Yost, Inside the Minds: Intellectual Property Licensing Strategies, 2014 ed. (Thomson Reuters)
• “Preserving Privilege During IP Due Diligence” – February 25, 2014, Licensing Executive Society (instructor).
• “How to Build Your Patent Program and Create Incentives to Innovate”, July 26, 2012, Ninth Annual Patents for Financial Services Summit (WRG); New York City (panel)
• “Prometheus in the Post-Bilski Age: Patentable Subject Matter Under Continued Attack: Procuring, Asserting or Defending Against Patentability Amid Increasingly Strict Statutory Subject Matter Standards” – May 3, 2012, Strafford Publications (instructor).
• “Patent Law:  Past and Prologue”, Tenth Annual Hot Topics in Patent Law, George Mason University School of Law – July 19, 2011.
• “Improving Your Chances for Success When Prosecuting Cases in the Finance and Banking Art Units at the USPTO,” July 25, 2007, Fourth Annual Patenting Business Methods in the Financial Services Industry (WRG); New York City (panel).
• “Beyond Bilski” – June 30, 2010 IPLaw360 panel moderated by Prof. John Duffy of University of Virginia.
• “Responding to the Effect of KSR v. Teleflex on Obtaining and Enforcing Business Method Patents on the Internet,” February 27, 2008, Patenting Business Methods for Internet-based Commerce, (WRG); New York City (panel).
• “The Patent Reform Act of 2007: Does it Fix What is Broken?”, Los Angeles Intellectual Property Law Association 2007 Annual Meeting, June 9, 2007 (speaker).

Publications

• “Winning Strategies at the PTAB, Part II: Common Pitfalls That Patent Owners Should Avoid” – May 28, 2024, IPWatchDog
• “USPTO’s Proposed Terminal Disclaimer Rule Would Harm Inventors” – May 22, 2024, IPLaw360
• “Winning Strategies at the PTAB, Part I: Bring Your Game” – May 22, 2024, IPWatchDog
• “Patent Applications Published After the Priority Date of a Challenged Patent Are Not ‘Printed Publications’ for IPRs” – January 15, 2024, IPWatchDog
• “The Federal Circuit’s Secret Merger of Alice Step 1 and Step 2”, IPLaw360, June 18, 2020, by Stephen Schreiner, Thomas Scott, Jr. and James T. Carmichael.
• “A Possible USPTO Solution To PTAB Constitutionality Ruling”, IPLaw360, November 13, 2019, by James Carmichael and Stephen Schreiner.
• “PTAB Institution Decisions In The Wake Of SAS”, IPLaw360, July 12, 2018, by Stephen Schreiner and Maxine Graham.
• “Patent Trial and Appeal Board Trials Overhaul Patent Strategies”, Eleanor Yost and Stephen Schreiner, Inside the Minds: Intellectual Property Law 2015, (Thomson Reuters:  2015 ed.)
• “Understanding Alice: Step 1 Of Mayo Analysis at the PTAB”, IPLaw360, October 17, 2014, by Stephen Schreiner, Jennifer Albert, and Charles Li.
• “Intellectual Property Update: Patentability of Financial Processes After the Supreme Court’s Alice Decision”, The Banking Law Journal, October 2014, at pages 715-785, by Stephen Schreiner and Brendan McCommas.
• “Liberty Mutual Achieves Total Knockout of Progressive Patents in Series of Post-Grant CBM Proceedings”, Insurance Coverage Law Report, August 2014, at pages 3-4, by Jonathan Auerbach, Eleanor Yost, and Stephen Schreiner.
• “Best Practices for Managing Risk through Intellectual Property Indemnification Provisions”, chapter by Eleanor Yost and Stephen Schreiner, Inside the Minds: Intellectual Property Licensing Strategies, (Thomson Reuters:  2014 ed.)
• “Perfecting Security Interests in IP: Pitfalls and Bankruptcy Considerations”, The Banking Law Journal, November/December 2013, at pages 912-927, by Stephen Schreiner, Kevin Jordan, and Noah Lerman.
• “Using Patents to Protect Financial Process Innovations in Europe, China, and India”, The Banking Law Journal, June 2013, at pages 496-512, by Stephen Schreiner and Noah Lerman.
• “Intellectual Property Update:  Trends in the Patentability of Financial Processes since the Supreme Court’s Bilski Decision”, The Banking Law Journal, March 2013, at pages 253-266, by Stephen Schreiner and Noah Lerman.
• “Intellectual Property Update:  Viability of Business Method & Financial Method Patents after the Supreme Court’s Bilski Decision”, The Banking Law Journal Vol. 127, No. 10, October 2010, at pages 986-1002, by Stephen Schreiner and Noah Lerman.
• “Is there a Future in Obtaining and Leveraging Derivatives Patents”, The Banking Law Journal Vol. 125, No. 3, March 2008, at pages 272-284, by Stephen Schreiner, Eleanor Hynes, Luciana Aquino-Hagedorn.
• “Patent Protection Tips for Financial Services Firms,” American Banker, February 10, 2006.
• “Intellectual Property,” The Banking Law Journal, Vol. 124, No. 10, November/December 2007, at pages 920-930, by Stephen Schreiner and Andrew Baca.
• “What Banks Need to Show to Get a Patent,” The Banking Law Journal, Volume 124, No. 6, June 2007, at pages 558-566, by Stephen Schreiner and Ozzie Farres.
• “Patent or Trade Secret:  Which is Better,” The Banking Law Journal, Vol. 123, No. 3, March 2007, at pages 274-281, co-authored by Stephen Schreiner and Ozzie Farres.
• “How Banks Can Ensure Proper Ownership of Their Intellectual Property Rights,” The Banking Law Journal, Vol. 124, No. 2, February 2007, at pages 167-176, by Stephen Schreiner and Ozzie Farres.
• Statement entered into the Record, “Hearing on Issues Relating to the Patenting of Tax Advice,” Committee on Ways & Means, July 14, 2006.
• “Why Banks Are Now Implementing Patent Programs and How Patent Legislative Reforms Will Affect Banks,” The Banking Law Journal, Vol. 123, No. 8, September 2006, at pages 706-732.
• Does First-to-Publish Trump First-to-File?, IPLaw360, October 11, 2011, by Stephen Schreiner and Eleanor Hynes Yost.
• “Risks Of ‘Crowdsourcing’ To Find Prior Art”, IPLaw360, April 4, 2011, by Stephen Schreiner and Eleanor Hynes Yost.
• “Attorney-Client Privilege and IP Due Diligence:  Preserving Privilege Without Losing the Deal”, AIPLA mid-Winter 2010, by Stephen Schreiner, Adam Swain, Steve Frank, and Hope Mehlman.
• “IP Due Diligence in Corporate Transactions”, IPLaw360, March 24, 2009,by Stephen Schreiner, Adam Swain, Steve Frank, and Hope Mehlman.
• “Attorney-Client Privilege and IP Due Diligence – Balancing the Need for Information for the Deal Against the Risk of Waiver”, BNA Patent, Trademark & Copyright Journal, March 20, 2009, by Stephen Schreiner, Adam Swain, Steve Frank, and Hope Mehlman.
• “Proscribed Conduct for Patent Holders Participating in Standard-Setting Organizations,” IP Law & Technology Journal, Vol. 20, No. 10, October 2008, by Stephen T. Schreiner, Thomas J. Scott, Jr., and Inge A. Osman
• “Modern Patent Reexamination:  A Dilatory Step in Patent Litigation?”, State Bar of Texas, Intellectual Property Law Section, Summer 2008, by Stephen Schreiner, Gerald Holtzman, and Matthew Osborne.
• “No Reform Stone Left Unturned,” by Stephen Schreiner, Gerald Holtzman, and Matthew Osborne, IPLaw360, March 19, 2008
• “Interlocutory Appeals of Claim Construction Orders:  The Time Has Come,” The National Law Journal, IP Section, December 4, 2006, by Stephen Schreiner, Ozzie Farres, and Andrew Cadel.
• “Discussions on Tax Patents Have Lost Focus,” by Stephen Schreiner and George Wang, IPLaw360, July 13, 2006.
• "Patent Continuation Applications: How the PTO’s Proposed New Rules Undermine an Important Part of the U.S. Patent System with Hundreds of Years of History," Journal of Patent & Trademark Office Society, by Stephen Schreiner and Patrick Doody, Vol. 88, No. 6, at pages 556-569, 2006. of Columbia Bar
• "Patent Contaminations--How Proposed Rule Changes Will Undermine Our System and Create New Problems," co-authored by Stephen Schreiner and Patrick Doody, IPL Newsletter, ABA Section of IP Law, Vol. 24, No. 3, at pages 38-48, 83, Spring 2006.