Charles E. Bruzga

Senior Partner– Bruzga & Associates

Charles E. Bruzga

Contact Information

Phone: 212.269.1114
Email: cbruzga@aboutiplaw.com

Education

University of Colorado, Bachelor of Engineering in Electrical Engineering with Honors, 1977

  • Dean’s List
  • Member, Eta Kappa Nu, The Honor Society of IEEE

         -Franklin Pierce Law School, Juris Doctor, 1979

Admissions

New York Bar, 1986
New Hampshire Bar, 1979
U.S. Court of Appeals for the Federal Circuit, 1982
U.S. Court of Appeals for the Ninth Circuit, 1999
Federal District Court for the Eastern District of New York, 1986
Federal District Court for the Southern District of New York, 1986
Federal District Court for the District of New Hampshire, 1979
U.S. Supreme Court, 1987
U.S. Patent and Trademark Office, 1980

 

Profile:

Prior to Bruzga attending law school, an engineering school professor remarked upon a trait of his after he had aced the professor’s abstract and difficult course, “Statistical Thermodynamics,” and had his answers to a major exam posted by the professor as model answers. Bruzga told the professor that he would attend law school after completing engineering school, as to which the professor remarked that “the engineering community will lose a logical mind.” After attending law school, Bruzga has practiced intellectual property law, focusing on patent and trademark law, for over 35 years, for General Electric Company and prominent intellectual property law firms before starting his own practice. Bruzga has been given an AV Preeminent® rating in a peer review conducted by Martindale-Hubbell. This is “a testament to the fact that a lawyer’s peers rank him or her at the highest level of professional excellence,” according to Martindale-Hubbell. Bruzga’s willingness to handle difficult subject matter, his work being favorably compared with that of other attorneys for the same subject matter, and other matters, are discussed below.

Comparison of Bruzga’s work with that of other attorneys on same subject matter:

In his first job, as patent attorney at General Electric Company, Bruzga was faced with a steep challenge in prosecuting a semiconductor patent application. Two prior attorneys had generated two thick prosecution files from two prior, continuing applications in which the patent examiner thrice rejected the prior attorney’s attempts to show that the application disclosed subject matter that was patentable over the prior art. The last rejection by the examiner, before Bruzga took over prosecution, in fact declared that “[the prior art] has an identical structure to that of applicant.” Bruzga’s very first effort at prosecuting the application was met with success. At a personal interview with the examiner, “[a]greement was reached” that the application contained patentable subject matter.

As an associate attorney at a prominent IP boutique law firm, Bruzga obtained a patent related to a spatial filter of the electro-optical type. Another attorney at the firm was tasked with obtaining a patent on the spatial filter, whereas Bruzga was tasked with obtaining a patent on a system incorporating the spatial filter. It would be expected that the other attorney would focus on the spatial filter, and discern all its details, while Bruzga would focus more on the system as a whole. But, it was Bruzga’s patent disclosure that discussed the operating principles of the spatial filter more thoroughly than the other attorney’s patent disclosure, so that only Bruzga obtained a patent. Thus, the other attorney merely recited in a patent claim that a “variable potential * * * alters the transmissivity of said electro-optic material” (emphasis added). Bruzga successfully presented the more nuanced claim recitation of “annular bands [of the filter] being selectively changeable in a continuous spectrum from transparent to opaque in response to an electrical signal” (emphasis added). Perhaps, as a result of successes like this, a senior partner at the firm tasked Bruzga to take over prosecution of various patent applications as to which other attorneys in the firm were unsuccessful in prosecuting.

At his own firm, Bruzga & Associates, while co-representing an inventor in an infringer-initiated patent reexamination and reissue proceeding with one of the most prominent patent law firms in the U.S., both firms were tasked with drafting patent claims to distinguish over the prior art. It was Bruzga, and not the prominent patent law firm, which drafted the critical claim language that distinguished over the prior art.

At Bruzga & Associates, Bruzga drafted patent claims for a life sciences patent application that had been previously prosecuted unsuccessfully for two years in response to two office actions by a patent attorney with considerably more experience in this art than Bruzga. On first examination, a patent examiner concluded that Bruzga’s claims were allowable.

Difficult Subject Matter

Bruzga has successfully handled legal tasks with difficult subject matter.

At his first legal job, with General Electric Company, Bruzga presented an analysis of a trilogy of Supreme Court opinions relating to one of patent law’s most difficult issues, which was well-received by GE’s General Patent Counsel, Harry F. Manbeck (later, Commissioner of Patents and Trademarks of the United States). The issue concerned patent subject matter eligibility of computer software claims reciting mathematical formulae. Delving beyond the common understanding of the courts and the patent bar, Bruzga showed that “each of the trilogy of cases addresses claim overbreadth concerns and reaches a result consonant with the claim overbreadth analysis undertaken.” This view of harmony among the trilogy of cases was contrary to the then prevalent understanding in the patent bar that the cases were wholly disparate. Demonstrating that Bruzga’s analysis relates to a perennially difficult issue of patent law is that it was cited 22 years later in an amicus brief by Professor R. Carl Moy, author of the multivolume treatise, Moy’s Walker on Patents, in Bilski v. Kappos, 130 S. Ct. 3218 (Supreme Court 2010) concerning patent subject matter eligibility of business methods.

At the first law firm where he worked, Bruzga prepared a most unusual patent infringement and validity opinion that, surprisingly, concluded likely invalidity over prior art of record that had been considered by the patent examiner at a personal interview with the prosecuting attorney. Bruzga intuitively felt there was something awry with a visually-presented argument made by the prosecuting attorney in a personal interview with the examiner. Bruzga discovered that the prosecuting attorney’s argument was based on a subtly ambiguous misreading of the prior art. The assigning partner endorsed Bruzga’s opinion.

At his own firm, Bruzga & Associates, Bruzga agreed to petition the patent office to revive a patent application that the client had deliberately abandoned several years before by not responding to an office action. Bruzga advised the client that revival would be difficult to accomplish because the prevailing legal standard precluded revival of an application that a patent applicant had deliberately permitted to become abandoned. However, the client said that it had confidence in Bruzga’s ability due to Bruzga’s prior work for the client. Bruzga successfully showed that, while the client had deliberately abandoned its patent application, it had lacked an intention to abandon the underlying property right that was rendered worthless by the force majeure of a safety certification company refusing to certify the invention as safe.

Other attorneys have remarked upon patent infringement and validity opinions by Bruzga as being exceptional in their depth of subtleties but nonetheless cogent.

Topical Work Experience

Bruzga’s experience spans the range of obtaining patents, trademarks and copyrights, providing legal opinions as to validity and infringement of patents, trademarks and copyrights, engaging in inter parties patent and trademark opposition proceedings, crafting lack-of-novelty defenses to patent infringement, and briefing controlling issues in patent, trademark and trade secret cases.

Long-term Relationships

The majority of Attorney Bruzga’s clients have continued to rely on his advice and services for long periods of time:

    • Bruzga has been working with one inventor for over 20 years, who is currently guiding a large heavy industry startup company which has offices and manufacturing facilities in Connecticut.
    • While based in New York City, Bruzga provided patent services to Cleveland, Ohio-based GE Lighting Department for about seven years, as the only attorney from outside of Ohio.
    • Bruzga has visited Japan many times since 1991, when he established his own IP firm, to visit Japanese corporations and private Japanese lawyers for whom he has been working for many years. Bruzga represents a variety of Japanese companies in patent and trademark matters in the U.S. Bruzga speaks some Japanese, and in his private life, married a Japanese lawyer.

Professional Affiliations

American Intellectual Property Law Association.

Selected Publications

    • “A Review of the Benson-Flook-Diehr Trilogy: Can the `Subject Matter’ Patentability of Patent Claims reciting Mathematical Formulae Be Determined Under 35 U.S.C. Section 112?” 69 JPTOS 197 (1987).
    • “Sophisticated Purchaser Defense Avoided Where Pre-Sale Confusion is Harmful—A Brief Note,” 78 TMR 659 (1988) and 71 JPTOS 32 (1989).
    • “Challenging in Court U.S.P.T.O. Administrative Decisions: A Primer on Litigation Issues,” 7 AIPLA SELECTED LEGAL PAPERS 303 (1989) and 31 IDEA 51 (1990).
    • “Bar Admission Made Easier for Certain Federal Patent or Trademark Attorneys,” 31 IDEA 59 (1990).
    • “The Benson Court’s Approach to Computer Software—or Other—Patent Claims Reciting a Mathematical Algorithm,” 74 JPTOS 135 (1992).
    • “U.S. Trademarks Employing Foreign Terms,” 76 JPTOS 571 (1994), co-author.

      Disclaimer

      Please note that every case is different and must be evaluated and handled on its own merits. The facts and circumstances of your case may differ from the cases discussed above. Accordingly, the results in your case may differ.