Alexander W. H. Schneider

Alex is a senior counsel practicing in intellectual property law , with a focus on patent prosecution. He practices across a wide variety of technologies, including computer software, medical devices, mechanical devices and consumer products. Alex counsels clients on the management of large national and international patent portfolios for clients ranging from large corporations to startups. He provides strategic IP counseling tailored to the client’s offensive strategies to grow market share through IP assets and defensive strategies to reduce risk exposure to IP infringement.  

Alex has experience drafting patent applications across a diverse range of technology sectors, with a strong emphasis on software technologies, including graphics editors, image processing, blockchain, E-commerce, 3-D printing, online meeting management, database management, business analytics, CRM programs, data analysis and visualization, FinTech, EdTech, IoT, AR/VR, autonomous vehicle control, cybersecurity, and user interface design. In addition, Alex has substantial experience in machine learning and artificial intelligence technologies, including generative AI models.

Alex has extensive experience in patentable subject matter eligibility of computer software, including analyzing hundreds of 35 U.S.C. § 101 cases before the Federal Circuit, district courts, and the Patent Trial and Appeal Board (PTAB) to empirically determine successful patent prosecution and litigation strategies for clients.  

In addition to portfolio management and counseling, Alex’s other work has included conducting patent portfolio competitive analysis and risk assessments, conducting patent landscape mappings, preparing invalidity and infringement opinions, preparing patentability opinions, preparing freedom to operate opinions, conducting due diligence assessments of patent portfolios, conducting patent harvesting sessions, drafting IP terms in product development agreements, and conducting research and preparing memoranda on various IP-related issues.

Before joining Shook, Alex was involved in a number of IP litigation matters, including software patent litigation, medical device patent litigation, and trademark litigation. In his role, Alex worked closely with clients, including in-house counsel and engineers, and experts to develop and execute offensive and defensive litigation strategies to achieve favorable outcomes for clients in an efficient manner. Alex uses his patent litigation experience to obtain the strongest patents for his clients. 

While in law school, Alex completed an externship at the USPTO in Technology Center 2800 (Semiconductors/Memory, Circuits/Measuring and Testing, Optics/Photocopying, Printing/Measuring and Testing). There he worked with patent examiners and quality assurance specialists reviewing the prosecution history of patent applications in preparation for appeals before PTAB. Alex uses his insider knowledge of the USPTO to determine the most efficient route to obtain registered patents for his clients.

After receiving his J.D., Alex would continue his education by earning a Master of Science in electrical and computer engineering from Johns Hopkins University. This has enhanced his intellectual property practice in matters involving technologies such as computer science, electrical engineering, machine learning and artificial intelligence, satellite communication systems, wireless and wireline network integration, 5G mobile networks, image engineering and navigation systems. 

Alex also has a Bachelor of Science from the Department of Ocean and Mechanical Engineering of Florida Atlantic University. As a student there, Alex was part of a team that designed, built and tested an autonomous renewable energy-scavenging vessel. Alex has also won awards during his academic career for business planning and in intellectual property, federal income tax, and antitrust law.