
Matthew Ma, PhD
Overview
Matthew Ma advises clients on patent matters with a deep understanding of the value of patents, combining his business, technical, and legal acumen.
As former Director of Intellectual Property (IP) at SRI International, a research and innovation company based in Silicon Valley, and several other companies, Matthew has extensive in-house and law firm experience in all phases of a patent’s life cycle, from working with inventors to making strategic decisions on patent filing to monetizing patent assets. These experiences allow him to better understand clients’ needs and value their successes as his top priority.
Matthew brings nearly 30 years of experience in technology development, patent drafting and prosecution, intellectual property management, and patent acquisition. His practice concentrates on patent drafting and prosecution of utility and design patents, patentability and freedom-to-operate studies, trademark registration, IP due diligence, IP litigation support, and IP licensing. His academic training in electrical and computer engineering, coupled with prior industry experience as a scientist and engineer, affords him an in-depth understanding of complex technologies behind his clients’ innovations.
Matthew has extensive experience with industrial standardization including participating in standard working groups in UPnP/DNLA and OSGi and developing standard-essential patent (SEP) strategies for technology companies. His SEP-related experiences also include due diligence on compliance of high efficiency video coding related patents and drafting patent applications related to MPEG 7 compact descriptors for video analysis (CDVA).
Matthew is a contributor to the engineer community’s understanding of IP protection. He lectured a course entitled “Intellectual Property Rights: Protection, Enforcement and Risks” at the 15th International Summer School on Advanced Computer Architecture and Compilation for High-Performance and Embedded Systems, July 14-20, 2019, Fiuggi, Italy. He has authored a book titled Fundamentals of Patenting and Licensing for Scientists and Engineers, World Scientific, 2008 and 2015, which have been used as a textbook for patent and innovation courses at UC Berkeley, Tsinghua University, University of Oslo, Rochester Institute of Technology, and IEEE. Matthew is editor-in-chief and a contributing author of a Chinese book titled Handbook of Best Practices in Intellectual Property Management, Enterprise Management Publishing, 2011. He has also published two online tutorials on patent protection for engineers with the IEEE eLearning Library.
During 2005-2021, Matthew was Associate Editor of the International Journal of Pattern Recognition and Artificial Intelligence. During 2011-2013, he was appointed by UC Berkeley and Tsinghua University to teach a course “Patent Strategy and Innovation” at Tsinghua University, Beijing. He has also served as Chief Advisor, Intellectual Property to Office of Enterprise Management Job Training & Certification, Chinese Enterprise Confederation from 2011-2014.
Prior to his transition into intellectual property, Matthew spent 15 years in corporate research, mostly with Panasonic R&D Company in the United States as a senior scientist working on artificial intelligence, machine learning, signal and document analysis, home networking, and telecommunications technologies. He is an inventor of 14 US-granted patents and is an author of 30 refereed conference and journal papers. He has also published two technical books on recommendation systems and mobile multimedia processing.
Prior to joining Wolf Greenfield, Matthew held various roles in the intellectual property field. Most recently, he was a patent attorney at an international law firm, where he drafted and prosecuted patent applications in the electronics and software space.
Experience
Patent Prosecution
- Drafted and successfully prosecuted hundreds of US patent applications in a wide range of technologies, such as artificial intelligence and machine learning, semiconductor design, medical device, mechanical device, blockchain, data security, image and audio signal processing, document analysis and handwriting recognition, natural language processing, cloud computing and virtual machine, virtual reality, augmented reality and mixed reality, consumer electronics, home networking and telecommunication, e.g., mesh networks, Femtocell networks, UPnP, SIP and 5G, television broadcast, MPEG codec, 2D barcode, robotic surgical systems, and software inventions.
IP Monetization and Litigation Support
- Conducted IP due diligence in an international merger & acquisition transaction in the consumer electronics domain.
- Assisted clients in monetizing patent assets, including mining portfolios, developing licensing and sales programs, identifying infringing parties, and developing evidence of use claim charts.
- Counseled on freedom to operate (FTO) and design around in various stages from pre-product release to pre-litigation.
- Developed over 100 claim charts for Fortune 500 high tech companies in image processing and telecom technologies in support of patent infringement actions.
- Conducted non-infringement / invalidity studies in litigation support.
Start-ups Counseling
- Drafted and reviewed IP terms in consultant agreements, service agreements, licensing agreements, and IP transfer agreements.
- Assisted clients in searching and selecting of trademarks and obtaining trademark registrations with the US Patent and Trademark Office.
- Advised a start-up company in semiconductor and artificial intelligence space in developing a sophisticated patent portfolio involving a combination of hardware and software technologies, which led to successful exit for the company.
- Served as volunteer attorney in legal clinics for nonprofit and small businesses, advising on IP strategies.
Activities
- Chair/Board Director, Chinese Institute of Engineers/USA Seattle Chapter
- Mentor, Student & Young Professionals Mentoring Program, University of Washington Technology & Business Association (TBA) and China Entrepreneur Network (CEN)
- Senior Member, IEEE Society (2000-present)
Interests
Matthew is actively involved with engineer and entrepreneur communities, and is a frequent speaker of New Jersey Chinese Computer Professionals Society, Chinese Institute of Engineers USA-Seattle Chapter, Seattle Entrepreneurship Club, and IEEE. He has assisted clients in incorporating and dissolving non-profit organizations, and obtaining of 501(c)(3) tax exempt status with the IRS.