Patent Preparation and Prosecution, Opinion Drafting
Adam drafts and prosecutes patent applications for clients having domestic and international portfolios. He also provides a variety of opinion work, including validity/invalidity opinions, infringement/non-infringement opinions, and freedom-to-operate (a.k.a. “clearance”) opinions for product development. Adam’s technological experience includes the following subject matter:
- Roller coasters
- Offshore wind turbine foundations
- Flexible packaging
- Welding
- Hardware (tools and fasteners)
- Compositions for foundry molds
- Integrated vehicle control systems
- Carbon monoxide abatement systems
- Cooktop burners
- Dispensing systems for canisters
- Watch and clock designs
- Luggage
- Software applications for smartphones
- Formation of securities exchanges for intellectual property
- Medical and therapeutic devices
- Oral care products
- Oxidant compositions for groundwater remediation
Trademark Prosecution, Oppositions, and Domain Name Disputes
Clients have unique needs with respect to trademark registration and enforcement. Sometimes these needs are complementary to other intellectual property interests, such as the launch of a patented product, and trademark assets are often among the most valuable property owned by an organization.
Adam provides his clients with risk assessments prior to filing a trademark application by searching and analyzing registered marks, common law marks, and other third party interests that may impact client trademark rights. He monitors and prosecutes trademark applications to registration, and Adam has experience in filing and defending trademark oppositions before the Trademark Trial and Appeal Board. When clients need specialized branding, marketing, or search engine optimization support, Adam provides them with trusted referrals and acts as a liaison when desired by the client.
Adam also counsels clients on domain name acquisition and drafts Uniform Domain-Name Dispute Resolution Policy complaints that help clients combat cyberpiracy.
Due Diligence and Litigation
In addition to drafting federal court pleadings for patent and trademark litigation, Adam often supports litigation with robust research and due diligence analyses, including prior art searches, chain of title review, claim charting, validity/invalidity opinion drafting, infringement/non-infringement opinion drafting, and related client counseling. He also assists clients in need of due diligence pursuant to mergers and acquisitions that involve intellectual property.
Licensing Negotiations
Adam develops monetization strategies for his clients, including drafting, negotiation, and evaluation of intellectual property licenses. He is skilled at analyzing issues that are commonly critical to licensing, including royalty rates, scope of the license grant, indemnification, ownership of improvements, as well as common interest agreements intended to protect confidentiality and privilege.
Client Counseling and Portfolio Management
Adam is always willing to go the extra mile to help clients achieve their goals, and he appreciates that projects must be advanced with leadership and expertise while maintaining compliance with common budget constraints. Adam assists clients on a wide range of intellectual property matters, covering patent, trademark, copyright, and licensing issues in both domestic and international contexts. When projects span international borders, Adam manages an established group of associates that he trusts to take on client issues in foreign lands such as China, Japan, South Korea, Australia, India, Europe, Canada, and Latin America.
Background Experience
Prior to joining Clark Hill, Adam worked for several years as a project manager and contract patent examiner at a boutique intellectual property firm just north of Chicago. As a project manager, Adam was responsible for developing new business, as well as leading a team of 15 paralegals and legal assistants dedicated to cloud-based docketing services. As a contract patent examiner, Adam prepared International Search Reports and Written Opinions for the United States Patent and Trademark Office’s use in response to Patent Cooperation Treaty applications.
Throughout law school, Adam maintained his full-time employment with an international pharmaceutical company. This intersection of law school and business allowed Adam to develop a deep understanding and appreciation for entrepreneurship, the law, and the importance of intellectual property in the global economy. He also honed his ability to listen to clients, recognize their often complex concerns, and provide cogent counsel in a timely and effective manner.
While in law school, Adam was a teacher’s assistant for legal writing, a member of the Saul Lefkowitz Moot Court team, and he also served as a judicial extern to the Honorable Virginia M. Kendall, United States District Court Judge for the Northern District of Illinois.
