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Biography
Still an engineer at heart, I help companies seek strong patent protection to arm against me-too products and stay clear of third-party patent rights.
I am the right choice for the right client, but not everyone needs the same sort of patent attorney.
Some clients want to just file something so that the client can say "patent pending" without caring about actually getting a useful patent. I am not a good fit for such clients as I want to be in it to win it.
Some clients want to file a patent application although they have no idea how to make the novel product. They see the patent process as a lottery ticket where you stake a claim for a type of product and hope for a big payoff. That is not how the system works and not how I work.
Some clients want to crank out lots of very narrow patent applications where the patent attorney essentially re-formats a fairly comprehensive invention disclosure form that has been vetted by the internal patent attorneys on a patent committee. They want someone to crank out narrow applications while minimizing expenses. They have reduced new patents to a numbers game as the company has lots of patents already. No budget for creativity. Someone with less skill than me can handle that routine work.
Some clients are building a business and know that having a strong set of patents will move the needle on the value of their company as strong patents will help protect margin and market share by keeping others from selling me-too products. They want a patent attorney that is an external team member that helps the company spend money wisely while seeking patents that have commercial significance. They want someone with sufficient engineering skills to understand their technology and communicate the technology to a patent examiner. This is the type of client that I am well-suited to help.
if you want an engineer with a broad set of skills to help you seek patents or stay clear of others' patent rights, then we should talk.
Education
- Duke University School of Law
- J.D. (1992)
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- Honors: Graduated cum laude Winner of Melvin G. Shimm Award for work as Articles Editor.
- Activities: Editor on Law Journal - Law & Contemporary Problems.
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- California State University - San Jose State University
- M.S. (1985) | Industrial & Systems Engineering
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- Honors: Graduated summa cum laude and admitted into Tau Beta Pi
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- Duke University
- B.S. (1982) | Completed the requirements for a BSE in both Biomedical Engineering and Mechanical Engineering.
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- Honors: Elected Dormitory President 1978.
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Professional Experience
- Patent Attorney
- FLYNN IP LAW
- - Current
- In 2011, founded a law firm to provide specialized legal advice regarding intellectual property, particularly domestic and foreign patent rights, and related business issues. NOTE -- the legal name of the firm is The Law Offices of Kevin E. Flynn, PLLC.
- Patent Attorney
- The Eclipse Group
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- Joined The Eclipse Group LLP, a national law firm of seasoned attorneys that specialize in intellectual property with an aim to provide exceptional results at reasonable rates. Helped create and maintain a large portfolio of patents relating to spine surgery and spinal implants. Worked with a number of other medical device clients. Worked to manage patent firms outside of the United States to help clients acquire patent assets in both the US and abroad.
- Patent Attorney
- Daniels Daniels & Verdonik
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- Patent attorney at a firm that specialized in helping set up and support the growth of high technology companies. Obtained extensive experience helping companies examine patent issues for the first time. Helped companies prioritize IP expenditures to get the most bang for their limited budget. Handles all aspects of patent prosecution from strategy and initial patent drafting through the patent prosecution in both the United States and outside the United States.
- Patent Attorney
- Moore & Van Allen
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- Patent litigation and patent prosecution, general intellectual property counseling for a range of clients from small start-ups to sizeable longstanding companies.
- Patent Litgation Associate
- Fish & Neave
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- Patent attorney, primarily patent litigation support for large patent litigation such as the disputes between Altera and Xilinx; also wrote patent applications and responses to office actions from patent agencies; opinion work on scope of claim coverage and infringement or non-infringement.
- Engineer -- series of positions with increasing responsibility.
- Duke Power Company - Now Duke Energy
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- Series of postions over years working with industrial equipment to generate electricity, instruments to measure thermodynamic performance, computer systems to monitor and control projects. Obtained North Carolina Professional Engineer License while working for Duke Power.
Publications
Articles & Publications
- Samples of Issued Patents
- United States Patent and Trademark Office
- Provisional Patent Applications, The Good, The Bad, and The Ugly.
- North Carolina Small Business Technology Develpment Center
- Patent Searching for Entrepreneurs
- Triange TechBreakfast Lecture Series
- Protecting Your Competitive Advantages
- Presentation at You Grow Girl Annual Business Summit
- CREATE ACT -- New Legistlation Protects Joint Resarch Efforts, But With a Price
- WRAL TechWire
Speaking Engagements
- Provisional Patent Applications, The Good, The Bad, and the Ugly, SBTDC Webinar, Webinar
- SBTDC (North Carolina Small Business Technology Development Center)
- Address the proper use of a provisional patent application and the problems when an inadequate disclosure is submitted.
- Patent Issues for Triangle Angels Partners., Presentation to Monthly Meeting of Triangle Angel Partners, Research Triangle Park, North Carolina
- Triangle Angel Partners
- Overview of intellectual property tools and strategies.
- Protecting Your Competitive Advantages., You Grow Girl Annual Business Summit, Charlotte, North Carolina
- Discuss the concept of a competitive advantage and the various intellectual property tools for protecting the competitive advantages.
- Teach entrepreneurs DIY skills with online tools for patent searching.
- Patent Searching for Entrepreneurs, Triangle TechBreakfast Event at RTP Frontier, Research Triangle Park, North Carolina
- Triangle TechBreakfast
- Teach entrepreneurs DIY skills with online tools for patent searching.
- Patent Primer for Non-Patent Attorneys, Law to the People - Continuing Education Webinar for Attorneys, Webinar
- Law to the People
- Three-hour continuing education course for attorneys to explain patent concepts.
Certifications
- AV Preeminent™ Peer Review Rated
- Results of Peer Reviews compiled by Martindale-Hubbell
- Professional Engineer License (now expired)
- North Carolina Board of Examiners for Engineers and Surveyors
- Registration as Patent Attorney
- United States Patent & Trademark Office
Awards
- Patents I wrote were allowed and Issued
- United States Patent & Trademark Office
- I am most proud of the work I do for my clients to draft and often obtain patents that describe and claim their inventions. The award link takes you to the USPTO site to see a sample of my issued patents.
- AV Preeminent®--the highest rating awarded
- Martindale-Hubbell
- The Martindale-Hubbell® Peer Review Ratings™ help you, the consumer of legal services, identify, evaluate and select the appropriate lawyer for your legal issue. Peer Review Ratings™ identify lawyers with the highest ethical standards and professional ability. The ratings can be a useful aid when hiring an attorney.
- Named as being in the Legal Elite for the category of Patents
- Business North Carolina
- Since 2002, Business North Carolina magazine has honored Tar Heel lawyers by publishing Business North Carolina’s Legal Elite, a listing of the state’s top lawyers in business-related categories. Winners are chosen not by BNC editors but by the state’s lawyers. Business North Carolina’s Legal Elite has become the model for other awards and lists, but it remains unique as the only award that gives every active lawyer in the state the opportunity to participate. Business North Carolina’s Legal Elite includes the top lawyers chosen using this statewide ballot. Each year, BNC sends ballot notices to every member of the N.C. State Bar living in North Carolina — asking each a simple question: Of the Tar Heel lawyers whose work you have observed firsthand, whom would you rate among the current best in these categories? Voters are not allowed to vote for themselves. They may select members of their firms only if they pick out-of-firm lawyers in the same categories, with the latter votes weighted more heavily. The top vote-getter in each category becomes a member of Business North Carolina’s Legal Elite Hall of Fame and is ineligible to win again.
- Granted Admission to Tau Beta Pi for my work while a graduate student at San Jose State University
- Tau Beta Pi - The Engineering Honor Society
- Admitted 1985 for my work while seeking masters degree in engineering in for Industrial and Systems Engineering at San Jose State University, San Jose, California.
Professional Associations
- North Carolina State Bar # 23395
- Member
- - Current
- Activities: Member of 15B Judicial District (Orange and Chatham Counties)
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- North Carolina State Bar Association # 22186
- Member
- - Current
- Activities: Member - Intellectual Property Law Section.
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- North Carolina Bar Association-Section on Intellectual Property Law
- Member
- - Current
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- North Carolina Sustainable Energy Association
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- Council for Entrepreneurial Development
- Co-Chair of Demo Room Selection Committee, Invited Speaker
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- Piedmont Entrepreneurial Network ("PEN")
- President
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- North Carolina Professional Engineering Society (Charlotte Chapter)
- Social Chairman
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Jurisdictions Admitted to Practice
- New York
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- North Carolina
- North Carolina State Bar
- ID Number: 23395
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- United State Patent & Trademark Office
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Fees
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Free Consultation
Selecting a patent attorney is a major decision as the process is expensive and you will need to work closely with your patent attorney. You should definitely check to ensure that you have good working chemistry with a patent attorney before deciding on an attorney. I am happy to talk with you about the process and the costs without charging you for this general information. This general discussion will not go into your invention in depth and the chances that your particular innovation will be deemed patentable over the relevant prior art. -
Rates, Retainers and Additional Information
I have been doing patent work since 1992 and worked as an engineer for years before going to law school. My hourly rate is not as low as someone just out of law school. On the other hand, I am much more efficient than someone still learning the craft. You total cost is impacted by efficiency. As I own my firm, I can cut a bill when that is the right thing to do. Large firms often have lots of barriers to preclude cutting a bill even when the bill is larger than it should have been. My clients stay with me for years as they see my fees as reasonable in light of the value I provide.
Practice Area
- Patents
- Patent Appeals, Patent Litigation, Patent Prosecution
Languages
- English: Spoken, Written
Legal Answers
- Q. Can one file for a patent after letting a previous application lapse?
- A: It is possible. You will need to consult with a patent attorney and go through the dates of specific events.
If your first patent application (possibly a provisional application) was filed long before any of the time bar triggers (public sale or offer for sale, public use, public disclosure, or non-public offer for sale from a vendor quoting manufacturing of your product) and you are currently within a year of the first of these time bar trigger events, then you may still be able to file within the United States and the few other countries that do not require "absolute novelty". Depending on the earliest triggering date, you may not have much time so you need to contact your patent ... Read More
- Q. Do you have to mark the patent number on the product packaging or website?
- A: Yes, the owner of the patent can still sue. There is a rule that if a product has a device patent and does not mark the product with the patent number or a web site with the patent numbers, then the owner forfeits damages up to the point that the notice is given (often the filing of the law suit). But the owner can still sue. NOTE -- this rule does not apply to method claims so in some cases an owner has a patent but does not need to mark.
NOTE further, that they do not need to mark the product when the patent is pending.
- Q. How do you find if a patent was aquired or sold
- A: When a United States patent is sold, the acquiring party usually notes the change of ownership in the USPTO records. You can check these records and see the chain of title for the patent running from the inventors to the current owner at https://assignment.uspto.gov/patent/index.html#/patent/search
Often there will be other records noted as well such as when the patents have a lien from a bank to secure a bank loan.
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