Intellectual Property and Patent Law: Chemicals, Materials, Energy, Biotech; and Chemical Engineering
ID: 726014 Minnesota, USA
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.
|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|
|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.
|Years||Country / Region||Summary|
|Years: 2001 to 2001||Country / Region: Germany||Summary: Research towards Ph.D. thesis at Heidelberg University, Germany|
|Associations / Societies|
|AIChE, ACS, AIPLA, NAPP, ASA|
|Licenses / Certifications|
|U.S. Patent Bar Registration|
|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.|
|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).
|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
biorefinery, renewable energy source, biotechnology patent law, canons of claim construction, claim (patent), patent claim construction, defensive patenting, innovation, intellectual property, inventions, legal patenting, patent, patent law, patent prosecution, patent specification, patentability evaluation, United States patent, chemical reaction engineering, chemical reactor engineering, chemical reactor model, patent claim chart, patent claim construction brief, Doctrine of Equivalents, plastics competitive analysis, plastics patent, plastics competitive intelligence, business development, patent infringement, international patent law, chemical engineering thermodynamics, denatured alcohol, competitive intelligence, ideation, alternative energy, trade secret law, device patent, licensable technology, biomass fuel production, alternative-fuel combustion, biomass organic chemical, patent cost reduction, corporate strategic planning, foreign patent, competitive analysis, alternative fuel vehicle, biomass, device patenting, fuel, energy-efficient gasification, research and development, chemical reaction, chemical reactor design, alcohol compound, process inventing, device inventing, chemical reaction mechanism, synfuel, producer gas, energy engineering, chemical reactor scale-up, chemical reactor, alternative fuel, alcohol fuel