Is your client...
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What’s on the horizon?
How did they acquire this technology?
What products/services are in development?
Are employment agreements in line with current practices regarding patents?
Have inventing employees received patent 101 training?
How do they handle those relationships?
Do they have agreements to ensure inventive ownership transfers to them?
Do they have their patent protection in that country and their downstream markets to protect against counterfeiting?
What is the nature of the transaction? Is it a license agreement, an acquisition, a merger, an investment or an IPO?
Is there a specific technology or a product line driving this deal? Has it been patented? Has a patent landscape clearance/ intellectual property (IP) due diligence been performed?
Do they nature and strength of their patent filings as a right to exclude?
IPP-At-a-Glance
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52 Attorneys
Alphatec Spine
Corning
CR Bard
Crown Equipment
Ferno-Washington
General Electric
Hill-Rom Kraft Foods Global
KSR Technologies
LexisNexis
Reed-Elsevier
Roche
Saudi Aramco
Thor Industries (Airstream)
Toyota
Patent Prosecution
Patent Litigation
Opinions and Counseling
Due Diligence
Portfolio Management
Patent Mining and Mapping
Patent Reexamination/Post Grant Review
International Business
Technology Licensing
8,258 +
filed since 2009
1,598+
U.S. patent applications filed in 2015
Nearly half of our patent attorneys
hold a Master’s or Ph.D. in an engineering or science field
Bio/Pharma
Chemical
Electrical
Mechanical
New Media
Optical
Software
Agriculture
Automotive
Aviation
Consumer Products
Energy
Health Care
Life Sciences: Biotech/Chemical/Medical Device/Pharmaceutical
Advance Materials
Manufacturing
University Research
Our patent professionals are trained and experienced
in all major technical disciplines, and pride themselves as being subject matter experts, knowledgeable about our clients’ businesses and technology.
Unique approach to the patent process is a distinct advantage to clients
Drawing on our experience with the process and our relationships with the USPTO, we strive to interview every office action, which lessens the pendency time, reduces the total number of office actions and decreases legal fees. In utilizing this approach, our clients have enjoyed tremendous success in obtaining patents and reducing legal spend.
PatentAdvisor system
This system enables attorneys to compile and analyze detailed information relating to a company’s patent portfolio, including numbers of granted and pending applications, average number of office actions between filing date and patent issuance/abandonment, average time between first office action and patent issuance/abandonment, and percentage of applications with at least one interview before patent issuance/abandonment. In addition, this system enables our attorneys to forecast and recommend prosecution strategies specific to an application based on the statistical patterns for its assigned examiner to help our clients improve their patent prosecution outcomes and gain a competitive advantage.In-house counsel experience with major companies.
Unique approach to the patent process is a distinct advantage to clients
Many of our patent attorneys worked initially in the corporate world, bringing with them unique business experiences. Infused with their knowledge, our attorneys possess the needed perspective to help clients navigate the patent landscape and contribute to their success by addressing and managing exposure to patent risk for their business efforts as an interrelated risk portfolio rather than as individual “silos”.
Flat-Fee Model
Nearly 75% of the patent prosecution matters we perform for clients are done on a fixed fee basis. We have developed a process-oriented structure to build in efficiencies, significantly reduce pendency from filing to issue, and achieve a much more concise file wrapper, all while reducing in-house burden. We focus on communication, and develop “subject matter experts” who are knowledgeable about the technology and the body of prior art. We also work with clients to develop tailored processes consistent with the client’s goals and organizations structure.
Experience Highlights
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We handle numerous intellectual property matters for the high technology glass manufacturer. Our role includes advising on patent preparation and prosecution, as well as managing their IP portfolio. We have secured a large number of patents for the client involving sophisticated technology and advanced components representing a significant portion of the company’s revenue and helped our client to remain a global leader in their industry.
We defended Ball Metal Beverages against patent infringement claims relating to the design, construction and use of metal beverage can lids. We were awarded summary judgment of non-infringement by the district court, and the decision was affirmed by the U.S. Court of Appeals for the Federal Circuit.
We have worked with Reed Elsevier for nearly a decade to advise on various intellectual property matters, including the preparation and prosecution of patent applications related to numerous technologies in its portfolio. In this time we have helped Reed Elsevier file and prosecute hundreds of U.S. and international patent applications. Our understanding of their business, technology and IP portfolio coupled with our strong relationships with its engineers and in-house counsel enables us to continue to develop cost-effective strategies that optimize protection, process and costs.
Our role has included advising on patent landscape studies and freedom-to-operate studies. We also serve as due diligence patent counsel with regard to potential acquisitions. Our role includes reviewing companies targeted by the client and evaluating and offering opinions on their intellectual property, freedom to operate, patentability and other related intellectual property matters. We recently worked with the client on a $325+ million acquisition, including initially developing a patent landscape study for the business development team, evaluating the strength of the target’s patent portfolio, and maintaining freedom to operate studies related to the acquired company’s medical devices. Since the completion of the acquisition, we have assisted the client in getting over a dozen new patents granted.
We have worked with Dr. Yasuhiro Ota and the Partner Robot group in preparing patent applications directed to object recognition and classification in robotics applications for TEMA (Toyota Motor Engineering & Manufacturing North America, Inc.). Particularly, our experience in this area relates to the automatic detection and classification of objects within an environment using image data, which directly correlates to autonomous vehicle applications.
Attorney Roster
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Leadership / Contact
Ann Arbor
Julie Staple, Ph.D.
Partner • (248) 203-1653 • julie.staple@dinsmore.com
IP Opinion and Prosecution
Douglas Wathen
Partner • (248) 203-1654 • douglas.wathen@dinsmore.com
IP Opinion and Prosecution
Joan Zhao
Partner • (248) 203-1659 • qiongjoan.zhao@dinsmore.com
IP Opinion and Prosecution
Doug Metcalf, Ph.D
Associate • (734) 773-4064 • douglas.metcalf@dinsmore.com
Ph.D. in Biochemistry & Molecular Biophysics
Cincinnati
Christopher Elswick
Partner • (513) 977-8224 • christopher.elswick@dinsmore.com
IP Opinion and Prosecution
Nicholaus Rericha
Partner • (513) 977-8352 • nicholaus.rericha@dinsmore.com
IP Opinion and Prosecution
Brian Tent
Partner • (513) 977-8308 • brian.tent@dinsmore.com
IP Opinion and Prosecution
Nicolas Brentlinger
Associate • (513) 977-8543 • nicolas.brentlinger@dinsmore.com
IP Opinion and Prosecution
Yongsok Choi
Associate • (517) 977-8688 • yongsok.choi@dinsmore.com
Patent Prosecution
Ashley Earle
Associate • (513) 977-8522 • ashley.earle@dinsmore.com
IP Opinion and Prosecution
Cory Ingle
Associate • (513) 977-8674 • cory.ingle@dinsmore.com
IP Opinion and Prosecution
Alexander Kalter
Associate • (513) 977-8655 • alex.kalter@dinsmore.com
IP Opinion and Prosecution
Bethany Lahmann
Associate • (513) 977-8356 • bethany.lahmann@dinsmore.com
IP Opinion and Prosecution
Jennifer Livingston
Associate • (513) 977-8695 • jennifer.livingston@dinsmore.com
IP Opinion and Prosecution
Craig Neiheisel
Associate • (513) 977-8110 • craig.neiheisel@dinsmore.com
IP Opinion and Prosecution
Ritu Singh
Associate • (513) 977-8495 • ritu.singh@dinsmore.com
IP Opinion and Prosecution
Bryan Wisecup
Associate • (513) 977-8667 • bryan.wisecup@dinsmore.com
IP Opinion and Prosecution
Gregory Wuennenberg
Associate • (513) 977-8792 • gregory.wuennenberg@dinsmore.com
IP Opinion and Prosecution
Columbus
Associate • (614) 628 6962 • keith.demaggio@dinsmore.com
Patent Procurement and Management
Dayton
Jim Beyer
Partner • (937) 449-6438 • james.beyer@dinsmore.com
IP Licensing, Patent Prosecution, IP Clearance & Risk Assessment, IP Due Diligence
Tim Hagan
Partner • (937) 449-6430 • tim.hagan@dinsmore.com
IP Opinion and Prosecution
Rick McNeely, Ph.D.
Partner • (937) 449-6418 • richard.mcneely@dinsmore.com
IP Opinion and Prosecution
Matt Molloy
Partner • (937) 449-6423 • matthew.molloy@dinsmore.com
IP Opinion and Prosecution
John Reed
Partner • (937) 449-6453 • john.reed@dinsmore.com
IP Opinion and Prosecution
Lawrence Fathman
Associate • (937) 449-6435 • Lawrence.Fathman@dinsmore.com
Patent Prosecution
Jennifer Lunn, Ph. D.
Associate • (937) 449-6459 • jennifer.lunn@dinsmore.com
IP Opinion and Prosecution
Chris Meyer
Associate • (937) 449-6404 • christopher.meyer@dinsmore.com
IP Opinion and Prosecution
Hallie O'Brien
Associate • (937) 449-6402 • hallie.obrien@dinsmore.com
IP Opinion and Prosecution
Denver
Tom Osborne
Partner • (303) 831-6961 • thomas.osborne@dinsmore.com
IP Opinion and Prosecution
Jim Pinto
Partner • (303) 831-6959 • james.pinto@dinsmore.com
IP Opinion and Prosecution
Detroit
Partner • (248) 203-1620 • john.chau@dinsmore.com
IP Opinion and Prosecution
Mark Harper, Ph.D.
Partner • (248) 203-1646 • mark.harper@dinsmore.com
Patent Prosecution, Patent Infringement and Invalidity Opinions
Kevin MacKenzie
Partner • (248) 203-1622 • kevin.mackenzie@dinsmore.com
IP Opinion and Prosecution
Douglas McEvoy
Partner • (248) 203-1623 • douglas.mcevoy@dinsmore.com
Patent Prosecution, Trademark Prosecution and Licensing
Cesare Sclafani
Partner • (248) 203-1631 • cesare.sclafani@dinsmore.com
IP Opinion and Prosecution
Douglas Sprinkle
Partner • (248) 203-1604 • douglas.sprinkle@dinsmore.com
IP Opinion and Prosecution
Ronald Citkowski
Of Counsel • (248) 203-1618 • ronald.citkowski@dinsmore.com
IP Opinion and Prosecution
Ernest Gifford
Of Counsel • (248) 203-1603• Ernest.Gifford@Dinsmore.com
IP Opinion and Prosecution
Allen Krass
Of Counsel • (248) 203-1608 • allen.krass@Dinsmore.com
IP Opinion and Prosecution
Jeremy Justice
Associate • (248) 203-1630 • jeremy.justice@dinsmore.com
IP Opinion and Prosecution
Groton
Weston Gould, Ph.D.
Partner • (248) 203-1640 • weston.gould@dinsmore.com
Patent Prosecution, Licensing, Biotechnology, Chemistry, Pharmaceuticals, Hematology
Richard-Henry Schabowsky, Ph.D.
Associate • (502) 540-2301 • richard.schabowsky@dinsmore.com
IP Opinion and Prosecution, IP Litigation
Lexington
Tony Bonner
Partner • (859) 425-1024 • tony.bonner@dinsmore.com
IP Litigation, Patent Prosecution, Trademarks/Copyrights, Licensing
Louisville
Denise Everett
Partner • (502) 540-2326 • denise.everett@dinsmore.com
IP Opinion and Prosecution, IP Licensing
Pittsburgh
Anthony Pisano
Associate • (412) 230-8988 • anthony.pisano@dinsmore.com
Patent Prosecution, Licensing, Post-Grant Actions
San Diego
Aubrey Haddach
Of Counsel • (619) 356-3518 • aubrey.haddach@dinsmore.com
Patent Prosecution, Licensing
Washington, D.C.
Therese Finan
Partner • (202) 372-9123 • therese.finan@dinsmore.com
Patent litigation, application prosecution, reexamination, reissue, patentability, infringement and validity opinions, IP audits
Toni-Junell Herbert
Partner • (202) 372-9121 • therbert@dinsmore.com
IP auditing and due diligence, patent litigation, licensing and technology transfer
Fabian Koenigbauer
Of Counsel • (202) 372-9109 • fabian.koenigbauer@dinsmore.com
Patent litigation, global patent portfolios
Bryan Walker
Associate • (202) 372-9126 • bryan.walker@dinsmore.com
Patent Prosecution, Trademarks/Copyrights