J. Peter Paredes
Shareholder Chair of Global Patent Practice

Peter’s practice involves developing patent, trademark, copyright, and trade secret portfolios for early stage companies, conducting due diligence investigations, conducting analysis and rendering clearance and freedom-to-operate opinions, rendering patentability opinions and conducting general intellectual property litigation. Peter assists clients by negotiating and drafting license agreements, technology transfer agreements, acquisition and sale agreements, confidentiality and consulting agreements and clinical trial agreements.

An accomplished and experienced patent prosecutor, Peter brings broad experience and skills to his patent law practice.  Peter is a key player on teams handling large-scale patent portfolios.  As Chair of the Global Patent Practice, Peter actively manages large patent portfolios in which activities coordinating US and foreign filing, annual maintenance fee payments, and working closely with clients to develop budgets to accomplish patent filings and prosecutions aligned with their business outcomes.  A well-rounded lawyer who can hit the ground running in a broad array of technologies, Peter readily employs his experience to counsel clients in the medical device, biotechnology, nanotechnology, software, mechanical, chemical, and business methods.

Peter’s understanding of IP strategy, licensing, and fund raising adds an extra dimension to his work counseling clients on patent prosecution issues. Even at the earliest stages of preparing an application, Peter can identify potential licensing opportunities and craft strategies to avoid exposure to potential blocking patents. Peter frequently provides opinions on freedom to operate, patentability, competitive patent portfolios and other complex strategic IP issues.

With a watchful eye on the future, Peter monitors competitive portfolios in our clients’ industries to remain aware of potential threats to their business development plans, products and patent portfolios. Peter is proactive in devising licensing, avoidance and enforcement strategies in response to the potential threats.

A leader inside the firm as the Chair of the Global Patent Practice, Peter oversees many client patent portfolios and advises clients regarding domestic and international patent prosecution management. Peter supervises the attorneys in patent application preparation, prosecution, strategic planning, and project management. Peter is primary contact and coordinator for many of the Firm’s clients and works closely with foreign counsel on international patent prosecution management. Peter is responsible for training staff, and developing, implementing and overseeing firm patent management procedures and docketing systems.

Peter received his bachelor’s degree from the University of California at Berkeley in Molecular & Cell Biology with an emphasis in Biochemistry. During college, Peter interned at Genentech, Affymax, and Sugen where he conducted research in vascular signal transduction, high-throughput drug screening, and novel substrate identification in cancer regulation. After college, Peter was a Research Associate at the UCSF Ernest Gallo Clinic & Research Center for several years, conducting neuroscience research in the fields of Addiction, Alcoholism, Alzheimer’s, and Anxiety. He contributed to the publication Protein Kinase C Epsilon Increases Endothelin Converting Enzyme Activity and Reduces Amyloid Plaque Pathology in Transgenic Mice , PNAS, 21, 8215-8220 (2006).

Peter received his J.D. from Chicago-Kent College of Law with an Intellectual Property Certificate. Peter placed on Dean’s List and received the CALI award for academic excellence in patent law. During law school, he served as an Associate Editor for the Journal of Intellectual Property and published an article titled, “Written Description Requirement in Nanotechnology: Clearing a Patent Thicket” ; 88 J. Pat. & Trademark Off. Soc’y 489 (2006).

Peter is admitted to practice in Illinois, before the United States District Court for the Northern District of Illinois, and before the United States Patent & Trademark Office.

1480 Techny Rd.
Northbrook
Illinois 60062
(847)-770-6000

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