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Nathaniel W. Lucek

Partner

Nathaniel leads Hodgson Russ’ Intellectual Property & Technology Practice, and 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 for mergers and acquisitions, 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, Estonia, Finland, France, Germany, Iceland, Hungary, Latvia, and Lithuania grow their U.S. businesses or develop their global patent portfolios. Besides helping obtain patent or trademark 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 intellectual property litigation practice. He has supported clients in responding to cease-and-desist letters, during trials in federal district court, and on appeal to the Court of Appeals for the Federal Circuit.

Nathaniel also 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.

Education

Clarkson University, B.S.

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

Admissions

New York
Massachusetts
U.S. Patent and Trademark Office

3.27.2025
AI’s Impact on Trade Secrets
There have been countless articles about how trade secrets can lose protection if they are used to train artificial intelligence. But what about some of the other impacts that AI may have on trade secrets as AI becomes more prevalent. For example, what happens to the value of your trade secret if AI can approximate it? Trade secrets must derive value from their secrecy, so this means a trade secret may be less valuable, right? The value of a trade secret can be affected by other particulars like marketing, but can that save your IP protection? Nathaniel Lucek and Elizabeth Morris were joined by Steven Balcof to explore these and other impacts on trade secrets (with some delicious baking examples).
12.18.2024
Hiring Challenges for New Semiconductor Fabs
Thanks to the CHIPS Act and other global pressures, there is a surge of new semiconductor fabrication plants popping up across the United States. While that’s encouraging news for the industry, it also presents some challenges for human resources departments. Aside from simply filling the available jobs, teams are also faced with numerous other challenges once the hiring bonanza at a new facility begins.

Nathaniel and Elizabeth are joined by Andy Drilling, a senior associate at Hodgson Russ LLP who focuses on labor and employment law. Andy outlines some of the obstacles human resources teams face when filling positions at new fabs, including relocation concerns, non-solicit and non-compete clauses, and familiarity with local and state laws and regulations.
12.11.2024
Implementing a Trade Secret Policy
Regardless of the type of business or industry, employers understand that employees may encounter confidential information that should be handled carefully. That is especially true when trade secrets are involved, in which case, protecting sensitive and confidential information is of paramount importance.

It’s easy to label something as confidential, but in order to successfully uphold that designation, employers must have a strong policy in place. Nathaniel and Elizabeth are joined by Luisa Bostick, a labor and employment attorney and partner at Hodgson Russ LLP. She discusses some of the best practices toward implementing a strong confidentiality policy, takes a look at the role human resources plays in implementation and enforcement, and looks at the impact a lack of policy could have on potential partners or buyers of the business.
11.7.2024
Increasing Diversity in Innovation with The Diversity Pledge
We’ve made great strides increasing diversity in innovation. This is essential to a company’s success. Yet, some groups as still underrepresented in the intellectual property process. That’s where the Diversity Pledge comes in. The Diversity Pledge helps companies better understand their strengths and weaknesses as they try to improve their statistics through best practices. The companies also share their progress, which helps refine the best practices. For example, experience shows changing terminology from “inventor” to “innovator” will net more participation from groups that may not consider themselves as inventors or that don’t usually participate in the process. In another example, making invention disclosure submission more accessible (preferably with feedback) has a strong impact to the number of invention disclosures that are submitted.

Nathaniel and Elizabeth were joined by Suzanne Harrison, Chair of the Patent Public Advisory Committee at the USPTO, and Frances Winkler, Manager of IP Operations & Innovation Programs at Pure Storage, to explore some of the findings and learn how the Diversity Pledge was implemented at Pure Storage.
9.26.2024
Using Australian Expedited Examination to Accelerate Your Global Patent Portfolio
Australia is a big country (a continent, in fact), but it’s position in the global semiconductor market is not nearly as large. Even though the Australian semiconductor industry is small, nestled in the country’s unique patent examination system is a pathway to accelerate examination of your global patent portfolio. Expedited examination in Australia is free and can be requested in many situations. It also can result in a granted patent in less than one year from the request. Elizabeth and Nathaniel are joined on this episode by Paul Davis and Fraser Smith from Davis IP to discuss how a positive result down under can then be used to accelerate patent examination in other jurisdictions. They also talked about how navigate Australia’s acceptance window during patent examination and some upcoming changes to the fee structure for Australian patent applications.
8.8.2024
What Legal Teams in the Semiconductor Industry Can Learn from Barbie
While the knockoff concerns and “packaging” are a little different, the underlying legal problems are surprisingly similar between the semiconductor and toy industries. Both have extremely complex supply chains. Knockoffs in either space can lead to costly reliability and quality problems. For both, IP is one of the most valuable assets and represents thousands of hours of development and market research.

Nathaniel and Elizabeth were joined by Jordan Walbesser, Director of Legal & Business Affairs at Mattel, Inc., to learn more about how the toy industry approaches these issues. They talked about a more friendly approach to licensing, working upstream in the supply chain, RFPs, and how to protect products when patent protection isn’t appropriate (or isn’t possible). On the last point, Jordan explained that product quality and customer service can protect you when patent protection is limited – whether that cost-sensitive customer is a parent shopping for an upcoming birthday or a massive multinational company.
7.25.2024
AI Trends: A (non-GPT) Chat with OpenAI
Companies can’t escape AI. It’s in the news. It’s being added to existing software products we use. It’s being pitched to solve all sorts of problems. AI seems like it will play a big role in R&D, legal, HR, and other fields, but how will it be implemented? What should companies be doing during adoption and testing? What are the risks? Rather than ask ChatGPT, Elizabeth Morris and Nathaniel Lucek spoke with Ashley Pantuliano, Deputy General Counsel at OpenAI. Ashley admitted that are still legal grey areas with AI usage, but these grey areas keep changing. Tech fluency and updated policies can help avoid pitfalls in this ever-evolving area of law.
7.11.2024
Board Members and Consultants: A Threat to Your Company’s Trade Secrets
Board members and consultants receive lots of high-value information from your company to do their job. They also can work with more than one company, so that amount of high-value information is multiplied. Not surprisingly, that makes them very attractive as a target for hackers and criminals. But you must carefully balance cybersecurity protection against making large changes to their software environment because these people are difficult to find. You certainly don’t want to turn them off, but you also don’t want them receiving trade secrets at their personal email address. Elizabeth and Nathaniel are joined by Charlotte Edwards from Cyberwolf in this episode to discuss this balance and security options for board members and consultants.
5.16.2024
Litigation Finance: Impact to the Semiconductor Space
Cost can be a limiting factor (or even THE limiting factor) when considering a patent infringement lawsuit. Staying under a million dollars in legal spending can be considered a victory of sorts for complex matters. That is a huge impediment to small companies and entrepreneurs. On this episode, we explore an alternative that may help level the playing field across high-tech industries: litigation funding. Nathaniel Lucek and Elizabeth Morris are joined by Justin Maleson from Longford Capital to discuss how litigation funding works and what makes an interesting case for a litigation funder.
4.11.2024
Patent Trolls in the World of Semiconductors
Business executives and patent practitioners tend to have similar negative feelings around patent trolls and their letters offering to license sometimes dubious IP. These patent troll entities tend to file a large volume of nuisance lawsuits, which increases legal costs for companies. No industry is immune and these lawsuits impact companies at all levels of semiconductor manufacturing. But besides their ultimate goal of making money using their collection of patents, how do these patent trolls operate? Where do they find their targets? And, most importantly, what should you do when you receive a letter from a patent troll? Nathaniel and Elizabeth are joined on this episode by Pat Muffo, who is a patent attorney and IP litigator. Pat shares his insights and experiences gained from studying, writing about, and battling with patent trolls.
3.28.2024
Changes to Filing US Patent Applications: The USPTO’s DOCX Program
The process to file US patent applications online has been almost the same for the past 10-15 years. That filing process finally changed in January 2024 when the USPTO started requiring new U.S. nonprovisional patent applications be uploaded as DOCX files to avoid a surcharge. The DOCX requirement, which was postponed repeatedly, caused an uproar in certain corners of the U.S. IP world. But what does the DOCX requirement cover and what will the impact be? Nathaniel and Elizabeth are joined by John DiMaio, a patent attorney at Hodgson Russ, to figure out if this new requirement harms applicant rights or if the risks are exaggerated.
12.14.2023
IMEC: How Did Belgium End Up as a Semiconductor Research Powerhouse?
Belgium is known for many products: chocolate, beer, waffles, and many others. Folks in the semiconductor industry also recognize that it is a leader in semiconductor research. But why is that? How did such a small country position itself to have an outsized role in this industry? To answer these questions, Nathaniel Lucek and Elizabeth Morris were joined by John Baekelmans, a former VP at IMEC and currently Science and Technology Counselor at Flanders Investment and Trade. John shared the history of IMEC, including the bold decision by the government to build IMEC. We also explored how IMEC fits into the local research ecosystem and some of its current research focuses.
11.30.2023
Another Option to Protect Spares: Design Patents for Consumable Parts
The spares business is an essential revenue stream for semiconductor capital equipment manufacturers. While these components typically are not easy to protect with a utility patent application, many of them are ideal for design patent protection. Nathaniel Lucek and Elizabeth Morris were joined by Charles Rauch, head of the design patent practice at Hodgson Russ LLP, to talk about the benefits of design patent protection. Charlie explained how design patents can be used to protect components like graphite shields or end effector components. Charlie also explained how design patents are enforced against third party manufacturers.
10.23.2023
Artificial Intelligence at Work: How Policies Can Save Your IP
Applications for artificial intelligence at work seem boundless. AI could even write this episode summary (it didn’t, but maybe it should have). However, using AI carries risks to intellectual property protection, confidentiality, and bias. Look no further than the chip manufacturer that shared confidential information with ChatGPT to find a fix. On this episode, Nathaniel Lucek and Elizabeth Morris spoke with Hodgson Russ LLP attorney Rosellen Marohn about these risks and policies that companies can use to avoid problems. It’s probably no surprise that a single AI policy can’t be used for all parts of a business. Companies need to determine how AI will be used across the company and then develop specific policies with employee training about acceptable use.

Here are links to various articles or topics mentioned in the podcast:

What is AI?

Samsung

Barbie
9.14.2023
Borrowing Tools from Project Management to Build Your In-House Legal Department
Project management and team building are vital when running an in-house legal team. Sadly, those are not skills that are tested on the bar exam. In this episode, Nathaniel and Elizabeth are joined by Sean Blixseth, Managing Senior Counsel at Panasonic to learn about best practices when inserting legal into a product team. They discussed the importance of living in the business, embracing project management, and borrowing engineering tools to optimize your legal function – including the idea of hack-a-thons for streamlined legal procedures.
8.14.2023
Increasing Invention Disclosures from Underrepresented Inventors: The “She Invents” Program at Western Digital
Companies in the semiconductor industry need to gather invention disclosures from all corners of the company to help maintain a competitive advantage. Yet studies have shown that participation among different groups of inventors can be uneven, which leads to underrepresentation by certain groups. For example, the USPTO has shown that women are 20% of the technical workforce, but only 10% of inventors. On this episode, we are joined by Sabra Truesdale to learn about the “She Invents” program at Western Digital, which demonstrated an 88% increase in female inventor participation in its patenting process. Sabra explains some of the causes in underparticipation by women inventors and how the Western Digital program addresses these causes.
7.6.2023
Trade Secrets Theft and Your Dirty Laundry
Trade secrets represent an astronomical amount of the intellectual property in the semiconductor industry. But how do you protect these trade secrets and keep them safe? And what happens when you detect that your trade secrets may not be secure? Nathaniel Lucek and Elizabeth Morris are joined by Melissa Subjeck and Lura Bechtel from Hodgson Russ LLP to discuss trade secret protection and options to detect theft. They also explain what happens during an investigation for trade secret theft – including examples of the dirty laundry that can come out during an investigation.
5.11.2023
Artificial Intelligence and the Law: Rise of the Machine Inventor
We know that the advance of artificial intelligence absolutely will not stop (it was in a movie). To assess where AI may go with respect to law, Nathaniel Lucek and Elizabeth Morris spoke with David Sanker, Ph.D., who works on patent matters related to machine learning. The group discussed patent inventorship with AI, patentability of machine learning, AI assistance with patent drafting and patent examination, and machine learning algorithms for job candidate interviews.
4.13.2023
Unitary Patent and Unified Patent Court: What Patent Law Changes in Europe Mean for Semiconductor Innovation
After years of waiting, Europe is finally experiencing big changes with its Unitary Patent (UP) and new Unified Patent Court (UPC). The UPC will be open for business in June 2023 and will dramatically change how patents are litigated in Europe. The cost structure and benefits for a UP are already being analyzed for pending patent applications in Europe. But what does this mean for semiconductor innovation? Nathaniel Lucek and Elizabeth Morris are joined by Paul Keane, a European Patent Attorney at FRKelly in Dublin, to learn how these changes will affect companies in the semiconductor space and to discuss initial strategies for patent applicants that are considering their options.
3.9.2023
Working with University Researchers: Best Practices For University Tech Licensing
Universities have some of the foremost technical experts on the planet. So how can companies best use this brainpower? And what are the universities hoping to receive in return? In this episode of The Semi Interesting Podcast, Hodgson Russ LLP Partner Nathaniel Lucek and Pure Storage’s Legal Director of IP & Product Elizabeth Morris explore university tech licensing with Cheryl Junker, Associate Director for IP Transactions at Dartmouth College. They will discuss a university’s objectives when entering into a research agreement, the types of contract provisions that a university can’t change (no matter how nicely you ask), and why Bob Dole won’t let your company pay an enormous amount of money to walk away with all the intellectual property no strings attached.
2.9.2023
Designing a Patent Strategy for Enforcement
For such an unassuming document, patents can be hugely important. Whether you’re an inventor who just developed the next “latest and greatest” idea, or a company that helps those inventors get their product out in to distribution, patenting is an important part of the process. It can literally make or break your opportunities for growth and business.

In this episode of The Semi Interesting Podcast, Hodgson Russ LLP Partner Nathaniel Lucek and Pure Storage’s Legal Director of IP & Product Elizabeth Morris dive in to the patenting process. They’ll explain why designing a patent strategy tends to work best when it’s done as a team effort, how to be ready to throw elbows when competitors start crowding nearby, as well as why thinking bigger really is better when it comes to patenting in the semiconductor industry.
1.12.2023
Inventing isn’t just for people with PhD’s
In Episode Two of “The Semi Interesting Podcast,” we’re talking about one of the toughest issues facing any company – pulling in quality talent, and retaining it. In an industry as small (literally and figuratively) as that of semiconductors, that task can be daunting, to say the least. As difficult as it is to cultivate new talent, it’s equally as tough for those with talent to navigate the intellectual property patenting process. In this episode, Nathaniel Lucek and Elizabeth Morris take a look at how companies can break down the barriers for inventors and make it easier for them to get their ideas into the industry.
1.12.2023
Generating Engagement with Inventors
You’ve probably heard the saying, “It’s hard to find good help these days.” No matter what industry you’re working in, that saying almost always rings true. But once you do manage to find that good help – or inventors, in the case of the semiconductor industry – how do you retain it? Enter, the Semi Interesting Podcast Episode One.

In the premiere episode, Hodgson Russ LLP Partner Nathaniel Lucek and Pure Storage’s Legal Director of IP & Product Elizabeth Morris take a look at strategies on how to generate engagement with inventors. As they explain, it’s not always about the monetary reward when it comes to encouraging inventors.
1.6.2023
Semi Interesting Podcast TRAILER
We are launching a brand new podcast here at Hodgson Russ LLP – “The Semi Interesting Podcast.”

Don’t let the name fool you! The podcast is about semiconductors – see what we did there? – and it’s extremely interesting! Hosts Nathaniel Lucek and Elizabeth Morris offer a unique perspective on issues facing the industry. Join them and find out why the semi conductor industry is far more than semi-interesting!