Kevin R. Gualano

/My focus

I help clients protect their products and services by building strong patent portfolios in a broad range of technologies within the electrical, mechanical, and chemical arts. Specific technologies include:

• Computer architecture
• Wearables
• Medical devices
• Biorefinery systems and processes
• Mobile device services
• Semiconductor devices and manufacturing methods
• Pipe repair systems
• Hearing aids
• Consumer products

I advise clients on all aspects of patent prosecution, including office action responses, appeal practice, reexamination applications, reissue applications, and continuing applications. I also manage local counsel for the prosecution of foreign applications by providing the technical analysis and developing the legal strategies to achieve global consistency. More recently I have taken on a key role for creating and expanding a patent portfolio for a client looking to enter into a new market. In this role, I act substantially as in-house counsel by working closely with employees of the client across various different roles for the identification and development of inventions well before the invention disclosure stage.

As a trained chemical engineer, I further utilized my knowledge in the field by serving as a patent examiner with the U.S. Patent and Trademark Office in Alexandria, Virginia, in Art Unit 1783, where I examined patent applications concerning single and multi-layer structures for a wide array of technologies, with particular emphasis on surface coatings and substrates.

/Looking ahead

I foresee courts struggling with what constitutes patent-eligible subject matter for the near future, which will require flexible patent applications drafted to account for this evolving area of patent law.