Bradley J. Van Pelt

Bradley J. Van Pelt

Attorney

Chicago, IL

Main: 312.463.5000 Fax: 312.463.5001

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Brad combines his extensive legal experience and background in engineering with the valuable insight of a former patent examiner to help clients creatively advance their patent applications and strategically develop their portfolios. He concentrates his practice on prosecution, counseling, and litigation in all areas of intellectual property.

Brad has years of patent drafting experience in a range of industries and technologies, including mechanical, software, and business method arts. He frequently prepares freedom-to-practice opinions, and has served on a number of successful Banner Witcoff teams that have obtained favorable rulings for clients in inter partes review (IPR) proceedings and patent litigation.

In addition to his utility patent practice, Brad has broad experience in procuring design patents and is active in the design patent bar. He enjoys working with clients to craft innovative strategies to build and protect their patent portfolios, both domestically and internationally. He has spoken at numerous conferences and authored several articles on a variety of intellectual property topics, including IPR proceedings and prosecution strategies in light of the America Invents Act.

Brad has prepared and prosecuted software-oriented applications directed to security, networking, audio monitoring, cash handling devices, business methods, and graphical user interfaces and mechanical applications related to merchandising systems, transducers, microphones, earbuds, medical devices, insulation devices, sporting equipment, composite materials, container handlers, and dispensers.

Prior to his role at Banner Witcoff, Brad was a patent examiner at the U.S. Patent and Trademark Office. In this role, he examined patent applications directed to the mechanical arts, particularly those in the automotive, transportation, and power generation arts.

In addition, Brad served as an intern to U.S. Circuit Judge Richard Linn of the U.S. Court of Appeals for the Federal Circuit, which hears all patent appeals in the United States. Brad—who has an undergraduate degree in mechanical engineering—also worked as a design engineer for Sub-Zero Freezer Company, where he designed testing equipment for digital refrigeration components and software.

Presentations

  • “Patent Monetization, Global IP Considerations and Corporate Inventor Incentive Programs” Roundtable Luncheon, Oct. 9, 2019, Kenosha, Wisconsin
  • “IP and Trade: How IP Shapes the Structure of Global Value Chains,” IIPLA Annual Meeting. Sept. 25, 2019, Palo Alto, California
  • “Will the Real-Party-in-Interest Please Stand up? Tips, Takeaways and Key Decisions Relating to RPIs and Privys in PTAB Proceedings” Clear Law Institute webinar, May 2019
  • “Fishing for Effective Outside Counsel,” SHIP’s Second Annual Boots IP Summit, Galveston, Texas, April 2019
  • “New and Emerging Design Patent Strategies,” at WITCON, Banner Witcoff’s Corporate Intellectual Property Seminar, Chicago, 2017
  • “Advanced Patent Prosecution Strategies to Further Corporate Goals,” All Ohio Annual Institute on Intellectual Property, Cleveland and Cincinnati, 2016
  • “Best Practices for Corporate Counsel: Economically Protecting Your Inventions,” at WITCON, Banner Witcoff’s Corporate Intellectual Property Seminar, Chicago, 2015
  • “The Total User Experience: Improving the Content and Quality of Your Company’s Patent Application Post-AIA” WITCON, Banner Witcoff’s Corporate Intellectual Property Seminar, Chicago, 2014
  • “The Total User Experience: Improving the Content and Quality of Your Company’s Patent Application Process Post-AIA” Managing Intellectual Property Conference, Washington, D.C., 2014
  • “Two Sides of Patents: Getting Stronger Patents for Your Company and Alternative Ways to Defend Against Patent Litigation,” ACC Chicago CLE program, Rosemont and Chicago, 2014
  • “The Total User Experience: Improving the Content and Quality of Your Company’s Patent Application Process Post-AIA” Banner Witcoff/BNA webinar, 2013
  • “Emergency IP: Expediting the Granting of Patent Rights” at WITCON, Banner Witcoff’s Corporate Intellectual Property Seminar, Chicago, 2012

Articles

  • “Why Patent Ownership Disputes Can Make or Break Consumer Product Launches,” Journal of the Patent & Trademark Office Society,  25, 2019
  • “Clarifying Multi-Embodiment and Single-View Design Filings,” Law360, Dec. 14, 2018
  • “New Claim Construction Standard at the PTAB as of November 13, 2018,” IP Alert, Oct. 10, 2018
  • “Full Panel of Fed. Cir. Clarifies that Even Voluntarily Dismissed Cases Start the Year Time-Bar Clock for Inter PartesReview,” IP Alert, Aug. 27, 2018
  • “Highlights of Design Day 2018,” IP Alert, May 4, 2018
  • “Corporate Goals in the Patent Landscape: 5 Ways to Perfect Your Product Launch,” Corporate Counsel, April 25, 2018
  • “Using Ex Parte Appeals to Advance Key Patents to Further Corporate Goals,” IP Update, Spring/Summer 2017
  • “IP Management: Creating, Maintaining and Advancing Your Portfolio to Increase Your Company’s Bottom Line,” The Licensing Journal, March 15, 2017
  • “Adding to Your Company’s Bottom Line with Intangible Assets: Creating, Maintaining & Advancing Your IP Portfolio,” IP Update, Fall/Winter 2016
  • “Brexit’s Effect on Intellectual Property,” IP Alert, July 13, 2016
  • “Apple and Samsung at the Supreme Court: Case Proves Need for Design Patents in Overall IP Strategy,” IP Update, Spring/Summer 2016
  • “Obama Signs Law Allowing Trade Secret Owners to Sue in Federal Court,” IP Alert, May 12, 2016
  • “4 Times to File a Continuation Patent Application,” Law360, March 17, 2016
  • “Preparing for the Obvious at the PTAB,” Law360, June 30, 2015
  • “Challenging and Defending Obviousness at the PTAB,” IP Update, Spring/Summer 2015
  • “AIA Toolbox: Intake, Checklists, and Faster Drafting Techniques,” IP Update, Fall/Winter 2014

  • B.S. 2002, Mechanical Engineering, University of Wisconsin
  • J.D. 2007, Georgetown University

Bar Admissions

  • 2007, Illinois
  • 2018, Utah

Court Admissions

  • U.S. Patent and Trademark Office
  • U.S. Circuit Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois

Named an Illinois Rising Star, Super Lawyers, Thomson Reuters, 2014-2019

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