168712_bioimage

Peter J. Prommer



Peter Prommer is a partner in the Patents group. He advises small growing companies to large global corporations on how to develop and protect their intellectual property.

What do you focus on?

Leveraging my past experience as a licensed professional engineer with an international engineering consulting firm, I counsel clients on intellectual property strategies with a primary focus on patents. In addition to advising U.S.-based companies, I also assist foreign entities including European and Asian companies 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 analysis and enforcement issues.

Patents

I execute effective strategies for prosecuting U.S. and foreign patents within the software, mechanical, electromechanical and materials technologies. I also work with clients on opinions, as well as post-issuance matters including enforcement proceedings. My experience includes a variety of technologies such as wearable health technologies, software-based systems, medical devices, optical systems, propulsion systems, battery systems, precision tools, 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 Courtand the ongoing attempts by the federal courts 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

  • “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)

Contact

Peter J. Prommer

Partner

Chicago

Phone: 312-425-8552


Fax: 866-495-2308

University of Illinois, J.D., magna cum laude

Northwestern University, M.S., Walter P. Murphy Fellow

University of Illinois, B.S., with honors

Illinois

U.S. District Court, Northern District of Illinois

U.S. Court of Appeals, Federal Circuit

U.S. Patent and Trademark Office

German

The Illinois Super Lawyers publication has recognized Peter as a Rising Star for 2012 and 2013.

Peter currently serves on the Board of American Friends of Bucerius, an organization that supports Bucerius Law School, a private law school in Hamburg, Germany, founded two decades ago by ZEIT-Stiftung. In addition, he currently serves as co-chair of the Symposium Committee for the Intellectual Property Law Association of Chicago (IPLAC).

Back to top