As intellectual property counsel to many technology and manufacturing-driven companies, Chris provides strategic, business-centric counsel regarding the protection of intellectual property assets. His practice focuses on:
- Domestic and foreign patent preparation and prosecution
- Patent portfolio management
- Establishment, development, and management of intellectual property systems
- Intellectual property transactions, such as patent portfolio acquisitions and divestitures; public and private financing relating to client patent portfolios; patent auctions on behalf of sellers and buyers; and all aspects of development and joint development ventures, including intellectual property ownership, confidentiality, financial structures and terms, enforcement, and product supply
- Preparation of patent opinions of all types, including patentability, patent clearance, patent infringement, patent invalidity, and state-of-the-art/landscape opinions
Chris has written and spoken extensively on a wide variety of intellectual property topics with a particular focus on the assessment and understanding of how intellectual property assets and portfolios relate to businesses.
IP Skill Set
Notable examples of Chris’s IP skills and expertise include:
- Developing patent protection for a broad spectrum of IP budgets and IP portfolio sizes. In one example for a Fortune 100 client, Chris expanded protection for key company technology by leveraging a single undervalued U.S. patent application into a family of 10 mission-critical U.S. patents. In another example for a much smaller Midwest corporation under tight financial constraints, Chris secured lasting patent protection for a best-selling product line that kept competitors at bay while the client expanded product offerings into new retailers and distribution channels.
- Conducting IP due diligence investigations and preparing IP due diligence reports in connection with M&A and other corporate transactions, organization financing, yearly reporting, and other activities
- Utilizing patent application filing strategies that maximize value, including foreign filing strategies tailored in light of business and competitor realities, and continuation and divisional patent application tactics to increase product protection while amplifying market uncertainty and risk for competitors
- Auditing and “right-sizing” patent portfolios to better match the business goals of clients
- Preparing, filing, and prosecuting patent applications in multiple countries. Chris has extensive experience with patent application rules and procedures across the globe. Chris’s first two years of practice were with a well-known international IP firm in which most of Chris’s patent work involved European, Asian, South American, and international patent application preparation and prosecution before dozens of Patent Offices worldwide.
- Working with engineers, scientists, and other inventors to identify and harvest inventive technology, such as by conducting R&D reviews and ideation sessions
- Identifying and pursuing disruptive patent protection for clients with a focus on next-generation technology
- Summarizing patents and patent portfolios appropriate for every audience within an organization
- Distilling complex patent families into forms digestible by organizations to make business decisions
- Identifying multidisciplinary strategies for patent protection of inventions, including appropriate and effective combinations of utility and design patent practice
- Leveraging creative and diverse claim types in patent applications (e.g., apparatus, method, system, kit, and the like)
- Managing patent enforcement activities, including counseling on patent enforcement strategy, negotiation, timing, and budget for patent litigation and inter partes review proceedings
- Advising clients in defending businesses and activities in patent disputes, whether against competitors, non-practicing entities, or other parties.
IP Portfolio Management and Analytics
Chris specializes in reducing IP portfolio inefficiencies by identifying appropriate IP systems for client implementation. In this process, Chris calls upon his experience with different IP systems and organizational structures utilized by dozens of IP clients. Clients benefit from this process by having increased coordination and control of IP portfolios, improved ability to make sound IP-related business decisions, greater value extraction from IP assets, and reduction in IP spend.
Chris has developed a variety of software applications and platforms to increase his ability to deliver IP services currently unavailable on the market. These include different software packages for:
- monitoring IP transactions;
- mapping patents and patent portfolios with as many as six dimensional parameters per patent asset or patent family;
- determining patent and technology overlap between organizations;
- summarizing patent portfolios in “dashboard” format;
- tracking and forecasting patent spend; and predicting patent application filing activities by organization and technology.
Chris leverages these and other tools in several ways, such as to consolidate poorly organized and disparate IP portfolios into a single efficient organization-wide IP portfolio.
IP Team Management
Chris coordinates the efficient and timely delivery of IP services by client service teams of all sizes, from one or two-member teams for small companies and start-ups, to teams of more than 30 IP practitioners needed for the IP demands of multibillion-dollar organizations.
Chris currently represents six international multibillion-dollar corporations, and a large number of other organizations of varying sizes, in IP matters, providing a wide view of experience in different IP management systems, strategies, and styles.
Chris has extensive experience in the purchase and sale of IP, including IP valuation, brokering, and transactions. Chris has conducted more than 100 auctions of patent portfolios for companies, universities, and other organizations of varying sizes.
Honors & Recognitions
- Leading Intellectual Property and Licensing Lawyer, Chambers USA
- Member, American Bar Association
- Member, American Intellectual Property Law Association
- Member, Milwaukee Bar Association
- Member, Society of Manufacturing Engineers, Milwaukee Chapter