Dawn-Marie Bey is a partner in King & Spalding’s Intellectual Property Practice Group in the firm’s Washington, D.C. office. Ms. Bey concentrates her practice on client counseling with respect to all facets of intellectual property (IP) law, with particular emphasis on patent procurement and large patent portfolio management. For 10 years, she has counseled clients on a range of IP issues including: US and foreign patent prosecution strategies, patent enforcement and infringement defense, IP licensing, IP due diligence and IP ownership in view of government funding (e.g., Bayh-Dole, FAR, DFAR).

In addition to private practice experience, Ms. Bey spent four years as a patent examiner with the United States Patent and Trademark Office (USPTO) examining patent applications in the following arts: optical modulators, optical lenses, liquid crystal displays, lasers and semiconductors. She is registered to practice before the USPTO. Ms. Bey began her technical career working in the field of plasma physics at the Naval Research Laboratory where she studied high altitude nuclear effects via high-energy laser-induced simulations.

Ms. Bey attended George Mason University School of Law, where she graduated with a recognized concentration in intellectual property law, completing individual courses in all areas of intellectual property including patents, copyrights, trademarks and trade secrets and specialized courses in patent licensing, patent damages, patent prosecution, patent litigation, interferences, unfair trade practices and international protection of intellectual property. Ms. Bey is a published author in both the legal and technical fields.

Practice Areas

• Intellectual Property
  
  
• Patents
  
  
• Patents - Software & Electrical
  
  
• Engineering Systems
  
  
• Intellectual Property Due Diligence
  
  
• Intellectual Property Licensing

Representative Experience

• Responsible for patent procurement for a top 10 government contractor, managing large and complex prosecution docket requiring frequent communication with in-house counsel.
  
  
• Extensive experience with preparation and prosecution of electrical, optical, computer-related, and business method patent applications. Exemplary areas of technology include: electronic commerce; software; imaging; optical and computer networking and security; optics; liquid crystals; semiconductors; and telecommunications.
  
  
• Particular experience with preparation, prosecution and evaluation of patents in the financial services technology area, e.g., business method patents, in the United States and foreign jurisdictions.
  
  
• Significant experience with legal issues at the intersection of government contracting and intellectual property rights, including interpretation of the Bayh-Dole Act, as well as relevant Federal Acquisition Regulations (FAR) and Defense Federal Acquisition Regulations Supplement (DFARS).
  
  
• Involved with the intellectual property aspects of due diligence inquiries supporting the acquisition and spin-off of technology companies; gaining specialized knowledge in the area of open source licensing (e.g., General Public License (GPL) and Lesser GPL).

Publications

• Quanta v. LG Electronics: Further Restrictions on Patent Rights; but not an Exhaustion Windfall, Landslide (To be published Sept./Oct. 2008)
  
  
• Authority and Issues to Consider Prior to Entering into Funding Agreements with the Federal Government, Intellectual Property & Technology Law Journal (April 2006)
  
  
• There's No Free Lunch: Before Accepting Government Funding To Help Develop Or Build A Security Product, Companies Must Understand How It Could Alter Their Intellectual Property Rights To The Product, Security Management Magazine (June 2005)

  Shifting the Burden of Proving Patentability Vel Non In View of Dickinson v. Zurko, Journal of Intellectual Property Law, Vol. 12, No. 1 (Fall 2004)
  
  

• Supreme Court Rules on Key Patent Infringement Doctrine, Washington Legal Foundation, Vol. 17, No. 26 (2002)
  
  
• Time-resolved Measurements of X-ray Damage to Optical Coatings, J. APP. PHYS., Vol. 81, No. 3 (1997) (co-author)
  
  
• Spectroscopic Diagnostics in a Colliding Blast-wave Experiment, PHY. REV. E., Vol. 49, No. 2 (1994) (co-author)
  
  
• Soft X-ray Output from a Laser-produced Plasma, J. QUANT. SPEC. and RAD. TRANS., Vol. 51, No. 1-2 (1994) (co-author)
  
  
• X-ray Damage to Optical Components Using Laser-plasma Source, J. APP. PHYS., Vol. 74, No. 9 (1993) (co-author)

Memberships

• American Bar Association (ABA)
  
  
• American Intellectual Property Law Association (AIPLA)
  
  
• Federal Circuit Bar Association