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.
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:
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.
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.
U.S. Patent and Trademark Office
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
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