Peter Paredes

Partner

About Peter Paredes

Peter works closely with innovative inventors and companies of all sizes to develop and protect some of their valuable assets: their patent, trademark, copyright, and trade secret portfolios.  Peter represents clients in the medical device, pharmaceutical, nutraceutical, food, biotechnology, life science, and other  industries in the chemical, software, and mechanical arts.

An accomplished patent and trademark prosecutor, Peter brings broad experience and skills to his patent and trademark law practice.  As Co-Chair of the firm’s IP practice group, Peter actively manages international patent & trademark portfolios, and works closely with clients to accomplish patent and trademark strategies aligned with their business goals.

Peter’s understanding of IP strategy, licensing, and fundraising adds an extra dimension to counseling clients on IP prosecution issues. Peter identifies potential licensing opportunities and crafts 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.

Peter monitors competitive portfolios to remain aware of potential threats to clients’ business development plans, products, and IP portfolios. Peter is proactive in devising licensing, avoidance and enforcement strategies in response to potential threats. Peter assists clients by negotiating and drafting license agreements, technology transfer agreements, acquisition and sale agreements, confidentiality and consulting agreements and clinical trial agreements.

Peter serves as an Ops team member for Smart Health Catalyzer, where he mentors and helps form startups accelerating the commercialization of therapeutics, diagnostics and medical devices being developed at Midwest universities and research hospitals.

Peter enjoys playing sports with his son, cooking gourmet meals for his family, and traveling.

Articles

  • USPTO issues new & revised guidance on patent eligibility under 35 USC 101. USA - December 19 2014, Lexology.
  • Teva v. Sandoz: the new standard of review in claim construction. USA - January 31 2015, Lexology.
  • FeSSIFFaSSIF dissolution: if you understand what is written above you should read this article. USA - December 8 2014, Lexology.
  • Phase III biosimilar clinical trial & infringement threat does not create justiciable case or controversy: biosimilars will require the patent dance. USA - December 15 2014, Lexology.
  • Promega v. Life Technologies: a higher enablement standard for “comprising” not within the preamble of the claim. USA - January 16 2015, Lexology.