Attorney at Law (DC Bar, USA)
US Patent Attorney
European Patent Attorney
The son of European emigrants, I was born in the U.S. where I graduated with degrees in chemistry and law. I was employed for many years as an attorney at law and patent attorney in the US and Switzerland before I decided to settle in Germany in 2004.
I am admitted to practice as an attorney at law in the U.S. since 1984 and I have been registered to practice before the U.S. Patent and Trademark Office since 1989. I began my career in patent law as a U.S. patent examiner in 1984. In 1986, I continued my training as a patent attorney at patent law firms in Washington DC, Cleveland, Ohio, and Munich, Germany.
In the 1990s, I represented U.S. and German clients in patent infringement lawsuits. I am proficient in U.S. case law and civil procedure.
I was also employed in Switzerland as Senior Patent Counsel for the European headquarters of a global chemical company, where I was responsible for five business divisions. My duties included providing counsel in strategic IP decisions, negotiating and drafting contracts and carrying out IP due diligence and freedom-to-operate advice.
I have practiced before the European Patent Office as a qualified European patent attorney since 2008 and I have practiced solo as an attorney at law und patent attorney since 2010.
- German Bar Association as a foreign-qualified attorney
- District of Columbia Bar Association, USA, as an attorney at law
- United States Patent and Trademark Office as a registered U.S. Patent Attorney
- European Patent Office as a qualified European patent attorney
- Juris Doctor (1983) Cleveland-Marshall College of Law
- Bachelor of Science in Chemistry (1980) Cleveland State University
- Licensing Executives Society (LES) Germany
- German-American Lawyers’ Association (DAJV)
- Association of Intellectual Property Experts (VPP)
- German Chemical Society
Seminars and Articles
- Patentangriff aus den USA – sind Sie gewappnet? Forum Institut (Online, 28 October 2020)
- Afraid of the Cost of Patent Disputes in the US? Learn how to put your fears to rest – shown in three scenarios as part of the program IP Insurance for Defending and Securing IP Rights, BioM Biotech Cluster Development GmbH (Martinsried, Germany, 3 March 2020)
- Vertragsverhandlung USA, German International Chamber of Commerce in Coblenz (Coblenz, 19 February 2019)
- Patentangriff aus den USA – sind Sie gewappnet? Forum Institut (Frankfurt, Germany, 30 September 2016)
- Patentstrategien für den U.S.-Markteintritt, Forum Institut (Munich, Germany, 19 March 2014, und Stuttgart, Germany, 17 September 2014)
- Secondary Indicia not Secondary Anymore? Pharmatage, Stolmár & Partner (Munich, Germany, 26 June 2014)
- Keine Angst vor Patentangriffen in den USA, Forum Institut (Stuttgart, Germany, 18 October 2012)
- The Elimination and Creation of Defenses in the Wake of AIA, Tech Transfer Central (Online, 14 June 2012)
- Prior Use Defense, Best Mode and Virtual Marking as part of the conference US Patent Reform: Consequences for European Practitioners, Forum Institut (Munich, Germany, 4 April 2012)
- Changes Introduced by U.S. Patent Reform Relevant to IP Licensing, IP Licensing Committee, Intellectual Property Owners Association (IPO) (Online, 10 May 2010)
- Preventing Patent Harassment in the U.S. – Strategies for safely introducing new products into the U.S., Forum Institut (Amsterdam, The Netherlands, 17 February 2012)
- R. Lelkes, P. Tauchner, and A. von Uexküll, Patent Term Restoration: Taking advantage of the Supplementary Protection Certificate, Patent World, Issue 48 (December 1992 / January 1993)
In-House Seminars und Training
I offer firms and public institutions in-house seminars and training for topics such as
- The U.S. patent examination process
- Defending against third-party patent infringement claims from the U.S.
- Freedom-to-operate (FTO) opinions
- Intellectual property provisions in transatlantic agreements
- Transatlantic joint development and contract research agreements
- Transatlantic contract negotiations
- License and M&A IP due diligence
- Managing foreign patent agents and attorneys
- Managing IP quality, risk and cost
These and other topics may be booked on an hourly or daily basis as in-person, or as video conference, seminars.
Standard fees: 280 € per hour or 1.800 € per day + travel costs (if applicable)
SMEs receive a 50 percent discount. Public institutions and professional associations can book my seminars free of charge other than travel costs (if applicable).