Kevin W. Weber
I love seeing your inventions come to life.
Contact: P /612.604.6644E /[email protected]
Administrative Contact: Richard Welsh P /612.604.6683E /[email protected]
Education
University of Minnesota Law School, J.D., magna cum laude, 2009
- Order of the Coif
- Supervisory Editor, Minnesota Journal of Law, Science and Technology
Northwestern University, B.S., Biomedical Engineering, 2004
Bar Admissions
Minnesota
U.S. Patent & Trademark Office
My Approach
Growing up, I always thought I would be a doctor – my goal in high school was to become a cardiologist. I majored in biomedical engineering in college, and I even prepared for and took the MCAT. That plan took a hard left turn following a chance encounter before med school which, in hindsight, altered (for the better) the trajectory of my life and career. As it turned out, my technical background in engineering and interest in medicine allowed for a seamless and natural transition to intellectual property law – primarily on the technology side – where I’ve since spent the past 15+ years.
Intellectual property assets are often at the heart of my clients’ businesses. Prior to joining Winthrop, I was in-house counsel for a Fortune 500 company (and its most recent spinoff) where I oversaw global intellectual property strategy for a wide variety of businesses, ranging from dental and healthcare, home improvement and consumer products. I’m adept at digging in and deeply understanding the businesses I’m a part of, and I aim to provide workable, pragmatic solutions for my clients, rather than simply providing unweighted alternatives. Having counsel who can clearly identify and communicate risk/opportunity throughout an organization – from the individual inventor up through the highest levels of management – while still keeping the product or deal on track is critical.
Outside of work, I enjoy spending time with my family and frequently serve as a private chauffeur for my two young daughters. I also love being active – you’ll often find me running or golfing in the summer and downhill skiing in the winter.
Practice Areas
Practicing Patent Law & Prosecution
My Experience
I counsel clients on all matters relating to patents – from identifying patentable inventions and drafting patent applications to related prosecution and portfolio management. I work closely with clients to develop comprehensive patent strategies to protect innovation across a wide variety of industries. I have extensive experience managing and prosecuting enormous patent dockets in the mechanical, chemical, electro-mechanical, software, and biomedical arts, as well as a few patents of my own. That background in developing the patent asset aids immeasurably in helping clients identifying potential infringers and monetization opportunities, as well navigating third party rights.
Representative Matters
- Built patent portfolios for digital orthodontics products, smart HVAC filter technologies, and damage-free peelable adhesives.
- Managed international docket of 350 plus patent families in over a dozen countries.
- Led new product design efforts at nascent stage to mitigate against infringement risk posed by entrenched competitor portfolios.
Practicing Technology & Intellectual Property Transactions
My Experience
Drawing upon my extensive in-house experience as Assistant Chief Intellectual Property Counsel for a Fortune 500 company, I counsel clients on intellectual property and global business issues relating to acquisitions, divestitures, licensing, portfolio management, sponsored research, collaborations, joint ventures, litigation, and settlement. Working closely with my clients, I leverage all aspects of intellectual property to help protect my clients’ innovation and augment business strategy.
Representative Matters
- Led comprehensive intellectual property related diligence and contract term negotiation for multimillion dollar divestitures and proposed strategic acquisitions.
- Crafted and negotiated myriad collaborative development and license agreements to bring wholly-new products to market.