OverviewPrateek brings a business-oriented approach to intellectual property counselling and portfolio management. Prateek takes into account his clients’ business strategies and competitive landscape to provide a holistic strategy for protecting his clients’ intellectual property assets. As a former software and electrical engineer, Prateek has a technological background and experience that includes electrical, computer, software, and mechanical technologies.
Prateek’s practice includes:
- U.S. and foreign patent preparation and prosecution
- Preparation of patent opinions including clearance (freedom to operate), patentability, patent invalidity, patent infringement, and landscape opinions
- Managing large patent portfolios
- Intellectual Property due diligence, product clearance, and litigation avoidance and support
- Intellectual Property and Software Licensing
Experience
Preparing and Prosecuting Global Applications
- Filed over 75 patent applications in the US for various electrical, software, computer, and mechanical technologies for clients large and small.
- Handled filing and prosecution of several of these patent applications globally in countries including Australia, Canada, China, Europe, Germany, Mexico, Poland, Russia, South Africa, and the United Kingdom.
- Some of the technology highlights of the patent applications include battery technology, artificial intelligence/machine learning, cryptography, product design, communication technology, etc.
Managing Large Portfolio of Patent Applications
- Manages a large global portfolio for a division of a heavy equipment manufacturer. Coordinates patent filings and prosecution in the US and globally to maintain a consistent patent strategy while navigating varying patent application rules and procedures across the globe.
- Works with engineers and scientists to identify inventive technology for adding to the patent portfolio.
Patent Opinions
- Works with clients to prepare clearance, patentability, patent invalidity, patent infringement, and landscape opinions. Provides design-around advice as needed to supplement other opinions.
- Worked closely with a large technology company client to identify competitor investment in technology areas based on patent filings. Provided related advice in helping client appropriate resources to gain market advantage based on competitor landscape.
Intellectual Property Due Diligence
- Worked with a startup to identify any intellectual property issues relating to client’s technology. Prepared opinions and provided advice in management of intellectual property to help client secure venture capital investment in their business.
Professional Activities
- Member, Intellectual Property Law Association of Chicago, 2018-2022
- Committee Chair, Young Members Committee, 2021-2022
- Committee Vice-Chair, Young Members Committee, 2019-2021
- Member, American Bar Association
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