Peter J. Prommer

What do you focus on?

Leveraging my past experiences in university research and as a licensed professional engineer with an international engineering consulting firm, I understand the creative and problem solving processes in the development of intellectual property. I counsel clients on implementing effective intellectual property strategies that include value-enhancing solutions. In addition to advising U.S.-based companies, I also assist foreign entities on various business issues as they consider furthering their activities into the U.S. market.

Intellectual Property Strategies

I work with clients to devise effective strategies, both foreign and domestic, for building and strengthening their intellectual property portfolios in a manner that aligns with their business objectives. This includes counseling clients on patents, trademarks, IP portfolio development and competitive intelligence, as well as opinion and enforcement matters.

Patents

I execute effective strategies for procuring U.S. and foreign patents in software, mechanical, electromechanical, and materials science technologies. I further work with clients on opinions, as well as post-issuance matters including enforcement, inter partes review, and other post-grant proceedings. My representative experience includes a variety of technologies such as wearable devices, digital healthcare solutions, software-based systems, microfluidic systems, medical devices, optical systems, imaging systems, propulsion systems, battery systems, consumer goods, composite materials, and infrastructure systems.

What do you see on the horizon?

Patent-eligible subject matter continues to be an issue, particularly for software and computer-implemented inventions. This area of law continues to evolve following the Alice Corp. v. CLS Bank ruling by the Supreme Court and the ongoing attempts by the Federal Circuit to interpret the decision. I continue to analyze patent protection strategies that minimize risk in this area to allow companies to more effectively grow their intellectual property.

Presentations

• “Intellectual Property in SMEs – How IP Strategies Can Improve Your Competitiveness,” German American Chamber of Commerce of the Midwest Business Luncheon, Schaumburg, IL, March 4, 2020 (Speaker)
• “Wired Attire: The IP and Business of Wearable Tech,” Nixon Peabody’s Modern IP Lawyer: A Boot Camp for Success Seminar, Chicago, IL, June 8, 2017 (Moderator)
• “Post-Grant Challenges: Recent Decisions and the (Slow) Growth of PGR Proceedings,” Nixon Peabody IP Corporate Seminar, Chicago, June 2, 2016 (Speaker)
• “Update on Inter Partes and Post-Grant Reviews,” Nixon Peabody IP Corporate Seminar, Chicago, June 2, 2015 (Speaker)
• “Patent Killers? What the New AIA Post-Grant Challenges Tell Us About the Future of Patents,” Nixon Peabody IP Corporate Seminar, Chicago, June 3, 2014 (Speaker)
• “Staying Out of Trouble While Being Social: Ethical Dilemmas Posed by Social Media,” Nixon Peabody’s Spring CLE Symposium on Intellectual Property, Chicago, May 2012 (Speaker)
• “Recent Developments—Trademarks,” Nixon Peabody IP Corporate Seminar, Chicago, June 2011 (Speaker)

Representative Experience

• Represent a wearable healthcare technology company on strategically building its international patent portfolio directed to conformal devices and digital healthcare solutions
• Represent an international leader in engineering, manufacturing, and scientific research software technology on strategically building and protecting its intellectual property portfolio
• Counsel to a global healthcare company on its international patent portfolio directed to monitoring devices and healthcare management systems
• Counsel to world-renowned research institutions on licensed and non-licensed technologies directed to microfluidic cell culture devices, medical imaging, and positioning systems
• Counsel to a leading technology company for high-performance construction products on procurement and enforcement strategies for its international patent and trademark portfolio
• Counsel to a leading global manufacturer of imaging devices and software solutions on its patent portfolio which has been independently recognized for the high quality of its patents
• Counsel to a leading computer hardware manufacturer on inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB)
• Counsel to both plaintiffs and defendants on patent litigation matters for medical device and digital technologies
• Counsel to a software company on securing through litigation its intellectual property ownership interests
• Counsel to multiple foreign companies on U.S. market entry activities