Worldwide strategic patent acquisition, enforcement and defense
Joel counsels his clients in intellectual property law, with an emphasis on patent acquisition, enforcement and defense in diverse technologies. His clients include:
- Manufacturers of all sizes that are focused on developing strategic patent portfolios.
- Companies interested in asserting or defending their patent rights.
- Businesses looking to better leverage their research and development investments.
Joel begins each client relationship by acquiring an in-depth understanding of the client’s business, ultimate intellectual property objectives and the technology at hand. He draws from his educational background at the University of Wisconsin-Madison and his practical experience obtained through his previous role as a mechanical engineer at a defense company to provide thoughtful client counseling.
Experience in Action
- Handles various legal proceedings to invalidate or uphold issued patents. He has represented clients with inter partes review trials in front of the United States Patent Trial and Appeal Board and appeals to the United States Court of Appeals for the Federal Circuit.
- Protects clients' rights in their product development investments. Joel leverages patent enforcement and defense strategies to counsel clients in the development of intellectual property portfolios.
- Supports clients with patent litigation involving diverse technologies. He also incorporates his post-grant enforcement and defense experience to establish robust patent portfolios to withstand challenges.
- Provides guidance to clients on protecting everything from incremental product improvements to groundbreaking product lines. Joel quickly understands clients’ technical developments and implements business-centric patent strategies.
Successes
- Provided patent enforcement and defense counsel in over two dozen post-grant proceedings before the Patent Trial and Appeal Board, including inter partes review proceedings and related district court litigations. Further defended clients’ rights on appeal to the Federal Circuit.
- Developed robust patent portfolio strategies to enhance client’s presence in the industry, in consideration of both existing products and planned future developments.
- Managed worldwide patent portfolios, including utility and design patent assets in the United States, South America, Europe and Asia.
Capabilities
Professional & Civic Activities
- Invention 2 Venture, presenter (multiple dates)
- Inter Partes Review: Practical Strategies for Business Decisions, presenter (Jan. 2014)
- State Bar of Wisconsin, member, Intellectual Property section
- Milwaukee Bar Association, member, Intellectual Property section
News & Insights
Education
- Marquette University Law School (J.D., magna cum laude, 2006)
- Marquette Law Review (Technical Editor, 2005-2006; Associate Editor 2004–2005).
- American Bar Association (Section of Intellectual Property Law and The Bureau of National Affairs, Inc.: Award for Excellence in the Study of Intellectual Property Law, 2005)
- Intellectual Property Law Section of the State Bar of Wisconsin Memorial Writing Competition: First Place, "Examining the Policy and Potential Impact of the 'Cooperative Research and Technology Enhancement Act of 2004': Congress' Latest Attempt To Promote Cooperative Research"
- ASCAP Nathan Burkan Memorial Competition: First Place, "Re-Hanging the Corporate Veil: Shielding Corporate Actors from Secondary Copyright Liability."
- University of Wisconsin - Madison (B.S.M.E., magna cum laude, 2002)
- Major: Mechanical Engineering
Bar Admissions
- Wisconsin
Court Admissions
- U.S. Court of Appeals, Federal Circuit, 2014
- U.S. Court of Appeals, 7th Circuit, 2007
- U.S. Patent and Trademark Office, 2006