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Philip A. Kunz

Partner
+1.312.807.4294
Fax +1.312.345.9983

Philip A. Kunz is a USPTO registered patent attorney who concentrates his practice on patent portfolio management and counseling, opinion work, due diligence and domestic and international patent prosecution in the areas of mechanical, electrical, software, business method and electromechanical arts. He is also active in patent litigation counseling for disputes involving both US and European patents.

His practice includes:

  • Conducting portfolio analyses and partnering with clients to: identify competitor technology and IP; evaluate offensive and defensive portfolios for strategic licensing and/or acquisition opportunities; and provide client business units with competitor commercial intelligence informed by patent literature.
  • Vast experience as a strategic team leader and supervisor for portfolio management and patent counseling related to an array of technologies, including: mechanical arts, electrical arts, computer and software, chemical compounds, pharmaceutical compounds,
  • Drafting and prosecuting domestic and international patent applications involving a wide range of technology including medical devices, infusion pumps, medical diagnostic and monitoring systems, ocular devices and treatments, micro-implants, drug-eluding stents, processes and compounds to mitigate interferences in diagnostic testing, DNA sequencing and PCR devices and methods, optoelectronic components and sensors, nutrition feeding apparatuses and compositions, gaming devices, nanotechnology, food processing and packaging, software and computer systems, and sporting equipment.
  • Providing strategic counseling for and handling of U.S. Inter Partes Review proceedings, reexaminations, and other Post-Grant proceedings.
  • He has secured hundreds of U.S. and foreign patent for clients ranging from start-ups to large multinational corporations and has advised as to overall patent prosecution strategy.
  • Performing patentability and invalidity analyses and opinions. He counsels clients in patent related matters including claim analysis due diligence for potential portfolio acquisition, patent clearance, invalidity, and non-infringement opinions.
  • Licensing work example includes counseling a client in negotiating, identifying, and valuing individual IP assets of a cross-licensing settlement agreement that included over one hundred U.S. and foreign patents, applications, nine domestic and foreign litigations, and post-grant proceedings.
  • Other licensing experience includes advising clients on joint ventures, NDAs, patent acquisition and divestiture, and structuring creative covenants, cross-licenses or royalty programs to settle or avoid litigations with competitors.
  • He has experience with patent and intellectual property litigation matters in: patent infringement cases in U.S. District Courts; patent nullity actions in the High Court of Justice in the United Kingdom; infringement cases in the District Court of Dusseldorf in Germany; revocation proceedings in the Federal Patent Court in Germany; European Patent Office (EPO) opposition proceedings at the EPO Opposition Division; and EPO opposition appeals at the Appeal Board.

Professional Background

Before attending law school, Mr. Kunz was a design engineer for a manufacturer of custom food mixing equipment, at which he created an implemented a product design automation program in a three-dimensional modeling program to streamline the design program.

During his law school studies, Mr. Kunz worked as an in-house IP clerk at a Chicago-based international corporation. While working there, he helped to manage and develop utility and design patent prosecution strategies, filed and managed trademark applications and trademark clearance searches, and conducted research and analysis for digital rights management copyright issues.

Achievements

  • Certified Legal Project Manager (LawVision)

Professional/Civic Activities

  • IP Law Association of Chicago
  • American Intellectual Property Law Association
  • Public Board Member of the Illinois State Board of Professional Engineers
  • Mr. Kunz was the primary architect and strategic lead of an ongoing infringement investigation of a multi-jurisdictional global enforcement project in which 7 patents were asserted in US District Court and 4 patents were asserted in the District Court of Dusseldorf, Germany against a competitor.
  • Mr. Kunz was the primary strategic and technical counselor for a client in a competitor lawsuit in the U.S. District of Delaware.