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Admitted to practice in Illinois and before the United States Supreme Court; United States Courts of Appeal for the Fifth, Seventh and Federal Circuits; United States District Courts for the Northern District of Illinois, Trial Bar, and Western District of Wisconsin. Admitted to practice before the United States Patent and Trademark Office and the Canadian Intellectual Property Office.
J.D., University of Houston Law School, 1981
B.S., Chemical Engineering, University of Illinois, 1976
The Intellectual Property Law Association of Chicago
Timothy M. McCarthy is a senior counsel in Clark Hill’s Intellectual Property practice group in the firm’s Chicago office, concentrating his practice in the areas of patents, trademarks, copyrights and trade secrets. Tim protects his client’s innovations in technologies such as cancer detection methods and techniques, continuous positive pressure therapeutics methods and devices, cytology and immunohistochemistry, microscopy and optics, telephathology and image recognition, biomedical instrumentation, metallurgical services and processes, four-color printing processes, food preparation equipment, and transportation vehicles.
Tim is also an adjunct member of the firm’s Litigation Practice Group and the Automotive and Manufacturing Practice Group.
Tim is licensed to practice law in Illinois and in numerous federal courts, including the U.S. Supreme Court, and is registered to practice before the United States Patent and Trademark Office and the Canadian Intellectual Property Office. He has been principal or sole patent counsel on numerous issued U.S. patents and their international counterparts, consulting with inventors and management on invention disclosure, claim scope and patentability. He manages domestic and international intellectual property portfolios for clients large and small, including development of patenting strategies, the prosecution of applications in the U.S. Patent and Trademark Office, and the supervision of the prosecution of applications in other countries. He counsels his clients on the avoidance of patent infringement and on efficient remedies for infringement by others, as well as performing due diligence reviews for acquisitions.
Tim consults frequently with Clark Hill’s transactional lawyers on intellectual property issues that arise in joint development agreements, licensing and assignment agreements, government contracts, asset purchase agreements, and other contracts. He assists Clark Hill’s entertainment lawyers in intellectual property issues relating to artists’ and performers’ rights in their works of authorship, such as movie scripts, musical compositions, other performance arts, and visual arts. He collaborates with Clark Hill’s international trade lawyers on intellectual property issues regarding the importation of goods, such as the seizure of trademarked items and the release of improperly-impounded materials.
Tim has tried cases across the country and is as adept in a courtroom as he is in a boardroom or engineering laboratory. Clark Hill’s lean staffing of intellectual property litigation matters brings cost-effective solutions that benefit the clients.
While in law school, Tim was articles editor of the Houston Law Review, a teaching assistant for legal research class and a member of the school’s interscholastic mock trial team. At graduation, Tim received the Fulbright & Jaworski Award and the Butler, Binion, Rice, Cook & Knapp Award.
Tim is rated AV® Preeminent™ Peer Review Rated by Martindale Hubble, a testament to the fact that other lawyers rank him at the highest level of professional excellence.
Tim is an adjunct professor at DePaul Law School in Chicago. He was previously an adjunct professor of intellectual property and product design at the Institute of Design, a graduate school of Illinois Institute of Technology. He presents webinars frequently in the Clark Hill In-House Café on new and interesting topics in patents, trademark and copyright law. Tim is active in public service. He is a long-time volunteer on the Motorcycle Safety Crew for the Avon Chicago Walk for Breast Cancer and a member of the Board of Directors of Rescue Riders NFP.