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 United States and European patents. He has led intellectual property due diligence counsel on over 10 transactions each with values exceeding US$1 billion.
Phil has vast experience as a strategic team leader and supervisor for portfolio management and patent counseling related to an array of technologies, including mechanical and electrical arts, computer and software, and chemical and pharmaceutical compounds. He regularly conducts portfolio analyses and partners with clients to identify competitor technology and IP, evaluate offensive and defensive portfolios for strategic licensing and/or acquisition opportunities, and provides client business units with competitor commercial intelligence informed by patent literature. Additionally, Phil drafts and prosecutes domestic and international patent applications involving a wide range of technologies. He has advised on patent prosecution strategy for dozens of portfolios containing several thousand U.S. and foreign patents for clients ranging from start-ups to large multinational corporations.
Phil’s 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 counseled a client in negotiating, identifying, and valuing individual IP assets of a cross-licensing settlement agreement that included over 100 U.S. and foreign patents, applications, nine domestic and foreign litigations, and post-grant proceedings. Phil has experience with patent and intellectual property litigation matters in the U.S. and abroad, including patent infringement cases in the U.S. Court of Appeals for the Federal Circuit; U.S. District Courts; the Patent Trial and Appeal Board; 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. Phil is also the co-author of an Amicus Curiae brief before the U.S. Supreme Court.
Before attending law school, Phil 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 process.
During his law school studies, Phil 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.
- Certified Legal Project Manager (LawVision)
IP Law Association of Chicago
American Intellectual Property Law Association
Certified Legal Project Manager (LawVision)
Phil’s practice includes prosecution, portfolio management, freedom to operate, due diligence, enforcement, and validity investigations in the following subject matter areas: Medical devices, infusion pumps, medical diagnostic and monitoring systems, child safety products, wireless headphones, automated pharmacies, ocular devices and treatments, counter flow centrifugation devices, 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.