Expert Details

Expert in Intellectual Property and Patent Law: Chemicals, Materials, Energy, Biotech; and Chemical Engineering

Expert ID: 726014 Minnesota, USA

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He has extensive experience developing commercial biorefinery technologies for the production of chemicals, materials, and energy from biomass. He has developed patent-pending biorefinery technologies as lead inventor. He is aware of the spectrum of feedstocks, technology pathways, co-product opportunities, economic considerations, and IP issues associated with biorefineries.

He is a registered U.S. patent agent with a busy patent practice, having prepared and filed over 1000 patent applications. He keeps up on evolving patent law developments in the USPTO, Congress, and in the courts. Claims, which define the patent right, are paramount. The patent specification must support the claims. Also, claims must be practical claims which actually protect the business (through either offensive or defensive patenting), rather than merely legal constructions or technical curiosities. A large aspect of his practice involves identifying inventions and innovation through invention disclosures, as well as "patent engineering" to further broaden inventions and patents.

His doctorate in chemical engineering is specifically in the field of chemical reaction engineering, from the top-rated Ph.D. school in chemical engineering (U of Minnesota). Industrially, he practiced chemical reaction engineering for many years before developing a patent and consulting practice. He still consults technically in this area, apart from IP considerations. In all these experiences, modeling and simulation played an important role.

Expert helped a client understand the state of the art with respect to a certain biochemical, through a detailed study and report.He helped a client develop an intellectual-property strategy and plan for implementation. Expert worked with client's inventors to draft a patent application.He worked with a client to implement best practices with respect to reaction engineering and catalysis. Expert helped a client to implement best practices with respect to statistical design and analysis of experiments.

Expert may consult nationally and internationally, and is also local to the following cities: Minneapolis, Minnesota - Saint Paul, Minnesota - Rochester, Minnesota - Burnsville, Minnesota - Saint Cloud, Minnesota - Eden Prairie, Minnesota - Minnetonka, Minnesota

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Education

Year Degree Subject Institution
Year: 1997 Degree: B.S. Subject: Chemical Engineering Institution: University of Notre Dame
Year: 2001 Degree: Ph.D. Subject: Chemical Engineering Institution: University of Minnesota
Year: 2005 Degree: Patent Bar Reg. No. 56693 Subject: Patent Prosecution Institution: U.S. Patent and Trademark Office

Work History

Years Employer Title Department Responsibilities
Years: 2006 to Present Employer: Undisclosed Title: CEO Department: Responsibilities: He serves clients in the chemicals, materials, energy, and biotechnology industries.
He formulates intellectual-property strategies to capture business value
He prepares and prosecutes patent applications before the U.S. Patent Office.
Years: 2007 to 2010 Employer: Range Fuels, Inc. Title: Director of Intellectual Property Department: Intellectual Property Responsibilities: He is directing the corporate IP strategy and execution.
He built the patent portfolio from 0 to 40 patent applications within 6 months.
He minimizes external legal costs by retaining patent prosecution in-house.
Years: 2001 to 2007 Employer: NatureWorks LLC (Cargill Inc.) Title: Principal Engineer and Patent Agent Department: R&D Responsibilities: He developed patent-pending technology for conversion of lignocellulosic biomass into chemicals and fuels.
He designed, built, and managed a novel pilot plant for biomass fractionation.
He led a global team to develop a corporate patent strategy for China.
Years: 2012 to 2016 Employer: American Process, Inc. Title: CIPO Department: Intellectual Property Responsibilities: Built the patent portfolio for the company to over 40 granted patents and around 300 pending patents. Managed all aspects of IP and negotiated many agreements.

International Experience

Years Country / Region Summary
Years: 2001 to 2001 Country / Region: Germany Summary: Research towards Ph.D. thesis at Heidelberg University, Germany

Career Accomplishments

Associations / Societies
AIChE, ACS, AIPLA, NAPP, ASA
Licenses / Certifications
U.S. Patent Bar Registration
Professional Appointments
Board Director, Minnesota Bio-based Products Advisory Council
Publications and Patents Summary
He has over a dozen publications in chemical engineering and intellectual property, as well as several pending patents relating to biomass refining for fuels and chemicals.

Additional Experience

Expert Witness Experience
Experience with U.S. and PCT patent drafting and U.S. patent prosecution, including responding to Office Actions and conducting Examiner interviews and arguments.

Expert was engaged as an expert witness in a federal case relating to intellectual property and bankruptcy. He applied detailed knowledge of both chemical engineering and patent law to opine about the technical and legal differences in technologies developed by the counterparties. He provided a detailed report and testified in court. Following a long trial, Expert's client prevailed.
Training / Seminars
Intellectual Property and Clean Tech (November 20XX).
Corporate IP Training (20XX-20XX).
Marketing Experience
Expert has over a decade of R&D and business experience in the renewable energy/chemicals and biorefining industries. Coupled with his IP expertise and license to practice patent law, he is able to fully integrate technical, legal, and economic concerns for technology-driven business opportunities and projects, especially those that relate to chemical engineering (B.S. and Ph.D. degrees).
Other Relevant Experience
IP strategy consulting.
Patent claim analysis for construction/scope.
Due diligence for venture-capital and other investments.
IP landscape development.

Fields of Expertise

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