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Kevin R. Gualano



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.

What do you focus on?

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.

What do you see on the horizon?

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.

Contact

Kevin R. Gualano

Counsel

Chicago

Phone: 312-425-8526


Fax: 844-855-8952

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

Illinois

U.S. Patent and Trademark Office

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