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    1. Home
    2. People
    3. Kevin R. GualanoPeople
    1. Home
    2. People
    3. Kevin R. GualanoPeople

    Kevin R. Gualano

    Counsel


    • Chicago
    • Office312.425.8526
    • kgualano@nixonpeabody.com
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    Introduction

    Kevin Gualano focuses his practice primarily on intellectual property transactions and counseling. He advises clients in the preparation, protection, and monetization of patents for a wide range of technologies.

    Practice Areas

    Intellectual Property

    My focus

    I help clients protect their products and services by building strong patent portfolios in a broad range of technologies within the electrical, mechanical, and chemical arts. Specific technologies include:

    • Computer architecture
    • Wearables
    • Medical devices
    • Biorefinery systems and processes
    • Mobile device services
    • Semiconductor devices and manufacturing methods
    • Pipe repair systems
    • Hearing aids
    • Consumer products

    I advise clients on all aspects of patent prosecution, including office action responses, appeal practice, reexamination applications, reissue applications, and continuing applications. I also manage local counsel for the prosecution of foreign applications by providing the technical analysis and developing the legal strategies to achieve global consistency. More recently I have taken on a key role for creating and expanding a patent portfolio for a client looking to enter into a new market. In this role, I act substantially as in-house counsel by working closely with employees of the client across various different roles for the identification and development of inventions well before the invention disclosure stage.

    As a trained chemical engineer, I further utilized my knowledge in the field by serving as a patent examiner with the U.S. Patent and Trademark Office in Alexandria, Virginia, in Art Unit 1783, where I examined patent applications concerning single and multi-layer structures for a wide array of technologies, with particular emphasis on surface coatings and substrates.

    Looking ahead

    I foresee courts struggling with what constitutes patent-eligible subject matter for the near future, which will require flexible patent applications drafted to account for this evolving area of patent law.

    Admitted to practice

    Illinois
    U.S. Patent and Trademark Office

    Education

    John Marshall Law School, J.D., Certificate in Intellectual Property Law; Lead Articles Editor, John Marshall Review of Intellectual Property Law
    University of Wisconsin, B.S., Chemical Engineering

    Insights And Happenings

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    • Alert

      New avenue for review opens—SCOTUS expands Director of USPTO’s authority

      Aug 24, 2021
    • Alert

      National Stage applications in flux as USPTO shifts course on rules governing RCE practice

      Feb 11, 2021
    • Alert

      United States Patent and Trademark Office v. Booking.com B.V.

      July 1, 2020
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      Ravinderjit Braich, Ph.D.
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      • Office:202.585.8385
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      Jennette W. Psihoules
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      • Office:312.425.8514
      • jgaretto@nixonpeabody.com
      Janet M. Garetto
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      • Office:213.629.6166
      • achoung@nixonpeabody.com
      Andrew  Y. Choung
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