Maxwell J. Petersen is a partner in the Chicago office of Lewis Brisbois and a member of the Intellectual Property & Technology Practice. Mr. Petersen is a patent attorney with over 25 years of highly diversified experience and a chemical engineering background. His experience includes over a dozen patent infringement lawsuits, interferences, inter partes reviews, inter partes and ex parte reexaminations, reissues, and other complex USPTO proceedings.
Mr. Petersen has practiced in a wide variety of technical fields, including chemical and petrochemical processes, polymer science, gas technology, membrane separation, nonwoven fabrics, absorbent articles, plastic films, plastic and paper laminates, steel alloys, refractory materials, digital televisions, cellular telephones, wastewater treatment, and particleboard manufacturing.
Mr. Petersen’s practice includes a specialty in the USPTO trial proceedings under the America Invents Act. This specialty encompasses inter partes reviews, post-grant reviews, derivation proceedings and ex parte reexaminations. The USPTO trial procedures offer speedy and cost-efficient ways to challenge the validity of a U.S. patent.
The USPTO procedures can provide savings approaching 90% compared to alternative procedures in the U.S. District Courts. Because the USPTO trial procedures are hybrids of conventional District Court litigation and the more complex preexisting USPTO proceedings, it is beneficial to seek an attorney with substantial experience both in the District Courts and in complex USPTO adversarial proceedings.
Mr. Petersen authored an article “A Guide to US Patent Challenge Procedures Under the Leahy-Smith America Invents Act,” Journal of Intellectual Property Law & Practice 2014. The article summarizes the complex USPTO trial procedures in an easy to follow format. Mr. Petersen has a presentation explaining these procedures that can be given by telephone using one slide.
Mr. Petersen has done patent work for Gas Technology Institute (“GTI”) who, in turn, partners with various universities in the development and patenting of innovative energy-related technologies, mostly pertaining to chemistry and chemical engineering.
For example, he prepared and prosecuted various GTI patent applications that named, as joint inventors, scientists at GTI and scientists at the partner universities. He has also led an enforcement lawsuit by Gas Research Institute (a GTI predecessor) against a California company that violated a license agreement by not paying royalties.
- Loyola University of Chicago, Juris Doctor, 1986
- Iowa State University, Bachelor of Science in Chemical Engineering 1980
- State Bar Admissions, Illinois
- State Supreme Courts, Illinois Supreme Court
- United States District Courts, United States District Court for the Northern District of Illinois
- Other Admissions, United States Patent and Trademark Office.
- Appointed Fellow of the Litigation Counsel of America, an honorary trial lawyer society
- Past Elected Director and Committee Co-Chair, Northwest Suburban Bar Association
- Member of the American Intellectual Property Law Association
- Member of the Intellectual Property Law Association of Chicago
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