Summary

Bill concentrates his practice on patent and trademark prosecution, portfolio management, product clearances, non-infringement and validity opinions, licensing and the enforcement of clients’ intellectual property rights against third parties. Bill has prepared and prosecuted numerous U.S. and foreign patent applications in a diverse array of technologies, including medical devices, packaging for medical products, electronic gaming machines, automotive, steel making, power tools and waste gasification.

Prior to joining Taft, Bill gained experience in patent prosecution and patent litigation as an attorney at both an intellectual property boutique law firm and a general practice law firm in Chicago. He also worked for six years as a mechanical engineer in the welding industry and with the design and manufacture of gearing and transmission components

All Service Areas

Education

  • University of Illinois Chicago School of Law (2002)
  • Michigan State University (B.S. Mechanical Engineering) (1993)

Admissions

  • State - Illinois
  • Federal - United States Patent and Trademark Office

Notable Matters

  • Extensive experience preparing and prosecuting U.S. and foreign patent applications.
  • Strengthened scope of clients’ patent rights through patent reissue.
  • Successfully defended clients’ patents and invalidated competitors’ patent claims through secondary patent review procedures.
  • Prepared infringement, invalidity, patentability and freedom to operate opinions.
  • Analyzed intellectual property licensing agreements.
  • Counsel clients on strategies for patent procurement, management, and enforcement.
  • Conducted assessments and prior art searches for new inventions.
  • Performed patent due diligence.
  • Litigation involving a variety of technologies, including mobile telephones, needleless valves, bone saws, cryogenics, orthopedic devices and contraceptive devices.
  • Developed case strategies, including formulating bases for patent infringement/non-infringement and validity/invalidity assertions.

Professional Affiliations

  • American Intellectual Property Law Association

    Member

  • Licensing Executives Society

    Member

  • Intellectual Property Law Association of Chicago

    Member