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Kevin E. Flynn

Kevin E. Flynn

Patent Attorney For US Startups Serious About Seeking Patents
  • Patents
  • New York, North Carolina, United State Patent & Trademark Office
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Summary

Still an engineer at heart, I help companies seek strong patent protection to arm against me-too products and stay clear of third-party patent rights.

I am the right choice for the right client, but not everyone needs the same sort of patent attorney.

Some clients want to just file something so that the client can say "patent pending" without caring about actually getting a useful patent. I am not a good fit for such clients as I want to be in it to win it.

Some clients want to file a patent application although they have no idea how to make the novel product. They see the patent process as a lottery ticket where you stake a claim for a type of product and hope for a big payoff. That is not how the system works and not how I work.

Some clients want to crank out lots of very narrow patent applications where the patent attorney essentially re-formats a fairly comprehensive invention disclosure form that has been vetted by the internal patent attorneys on a patent committee. They want someone to crank out narrow applications while minimizing expenses. They have reduced new patents to a numbers game as the company has lots of patents already. No budget for creativity. Someone with less skill than me can handle that routine work.

Some clients are building a business and know that having a strong set of patents will move the needle on the value of their company as strong patents will help protect margin and market share by keeping others from selling me-too products. They want a patent attorney that is an external team member that helps the company spend money wisely while seeking patents that have commercial significance. They want someone with sufficient engineering skills to understand their technology and communicate the technology to a patent examiner. This is the type of client that I am well-suited to help.

if you want an engineer with a broad set of skills to help you seek patents or stay clear of others' patent rights, then we should talk.

Practice Area
  • Patents
Fees
  • Free Consultation
    Selecting a patent attorney is a major decision as the process is expensive and you will need to work closely with your patent attorney. You should definitely check to ensure that you have good working chemistry with a patent attorney before deciding on an attorney. I am happy to talk with you about the process and the costs without charging you for this general information. This general discussion will not go into your invention in depth and the chances that your particular innovation will be deemed patentable over the relevant prior art.
  • Rates, Retainers and Additional Information
    I have been doing patent work since 1992 and worked as an engineer for years before going to law school. My hourly rate is not as low as someone just out of law school. On the other hand, I am much more efficient than someone still learning the craft. You total cost is impacted by efficiency. As I own my firm, I can cut a bill when that is the right thing to do. Large firms often have lots of barriers to preclude cutting a bill even when the bill is larger than it should have been. My clients stay with me for years as they see my fees as reasonable in light of the value I provide.
Jurisdictions Admitted to Practice
New York
North Carolina
United State Patent & Trademark Office
Languages
  • English: Spoken, Written
Professional Experience
Patent Attorney
FLYNN IP LAW
- Current
In 2011, founded a law firm to provide specialized legal advice regarding intellectual property, particularly domestic and foreign patent rights, and related business issues. NOTE -- the legal name of the firm is The Law Offices of Kevin E. Flynn, PLLC.
Patent Attorney
The Eclipse Group
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Joined The Eclipse Group LLP, a national law firm of seasoned attorneys that specialize in intellectual property with an aim to provide exceptional results at reasonable rates. Helped create and maintain a large portfolio of patents relating to spine surgery and spinal implants. Worked with a number of other medical device clients. Worked to manage patent firms outside of the United States to help clients acquire patent assets in both the US and abroad.
Patent Attorney
Daniels Daniels & Verdonik
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Patent attorney at a firm that specialized in helping set up and support the growth of high technology companies. Obtained extensive experience helping companies examine patent issues for the first time. Helped companies prioritize IP expenditures to get the most bang for their limited budget. Handles all aspects of patent prosecution from strategy and initial patent drafting through the patent prosecution in both the United States and outside the United States.
Patent Attorney
Moore & Van Allen
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Patent litigation and patent prosecution, general intellectual property counseling for a range of clients from small start-ups to sizeable longstanding companies.
Patent Litgation Associate
Fish & Neave
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Patent attorney, primarily patent litigation support for large patent litigation such as the disputes between Altera and Xilinx; also wrote patent applications and responses to office actions from patent agencies; opinion work on scope of claim coverage and infringement or non-infringement.
Engineer -- series of positions with increasing responsibility.
Duke Power Company - Now Duke Energy
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Series of postions over years working with industrial equipment to generate electricity, instruments to measure thermodynamic performance, computer systems to monitor and control projects. Obtained North Carolina Professional Engineer License while working for Duke Power.
Education
Duke University School of Law
J.D. (1992)
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Honors: Graduated cum laude Winner of Melvin G. Shimm Award for work as Articles Editor.
Activities: Editor on Law Journal - Law & Contemporary Problems.
California State University - San Jose State University
M.S. (1985) | Industrial & Systems Engineering
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Honors: Graduated summa cum laude and admitted into Tau Beta Pi
Duke University
B.S. (1982) | Completed the requirements for a BSE in both Biomedical Engineering and Mechanical Engineering.
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Honors: Elected Dormitory President 1978.
Awards
Patents I wrote were allowed and Issued
United States Patent & Trademark Office
I am most proud of the work I do for my clients to draft and often obtain patents that describe and claim their inventions. The award link takes you to the USPTO site to see a sample of my issued patents.
AV Preeminent®--the highest rating awarded
Martindale-Hubbell
The Martindale-Hubbell® Peer Review Ratings™ help you, the consumer of legal services, identify, evaluate and select the appropriate lawyer for your legal issue. Peer Review Ratings™ identify lawyers with the highest ethical standards and professional ability. The ratings can be a useful aid when hiring an attorney.
Named as being in the Legal Elite for the category of Patents
Business North Carolina
Since 2002, Business North Carolina magazine has honored Tar Heel lawyers by publishing Business North Carolina’s Legal Elite, a listing of the state’s top lawyers in business-related categories. Winners are chosen not by BNC editors but by the state’s lawyers. Business North Carolina’s Legal Elite has become the model for other awards and lists, but it remains unique as the only award that gives every active lawyer in the state the opportunity to participate. Business North Carolina’s Legal Elite includes the top lawyers chosen using this statewide ballot. Each year, BNC sends ballot notices to every member of the N.C. State Bar living in North Carolina — asking each a simple question: Of the Tar Heel lawyers whose work you have observed firsthand, whom would you rate among the current best in these categories? Voters are not allowed to vote for themselves. They may select members of their firms only if they pick out-of-firm lawyers in the same categories, with the latter votes weighted more heavily. The top vote-getter in each category becomes a member of Business North Carolina’s Legal Elite Hall of Fame and is ineligible to win again.
Granted Admission to Tau Beta Pi for my work while a graduate student at San Jose State University
Tau Beta Pi - The Engineering Honor Society
Admitted 1985 for my work while seeking masters degree in engineering in for Industrial and Systems Engineering at San Jose State University, San Jose, California.
Professional Associations
Biomedical Engineering Society
Member
- Current
North Carolina State Bar # 23395
Member
- Current
Activities: Member of 15B Judicial District (Orange and Chatham Counties)
North Carolina State Bar Association # 22186
Member
- Current
Activities: Member - Intellectual Property Law Section.
North Carolina Bar Association-Section on Intellectual Property Law
Member
- Current
North Carolina Sustainable Energy Association
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Council for Entrepreneurial Development
Co-Chair of Demo Room Selection Committee, Invited Speaker
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Piedmont Entrepreneurial Network ("PEN")
President
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North Carolina Professional Engineering Society (Charlotte Chapter)
Social Chairman
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Publications
Articles & Publications
Samples of Issued Patents
United States Patent and Trademark Office
Provisional Patent Applications, The Good, The Bad, and The Ugly.
North Carolina Small Business Technology Develpment Center
Patent Searching for Entrepreneurs
Triange TechBreakfast Lecture Series
Protecting Your Competitive Advantages
Presentation at You Grow Girl Annual Business Summit
CREATE ACT -- New Legistlation Protects Joint Resarch Efforts, But With a Price
WRAL TechWire
What Happened to Free Speech? Changes Are Needed to Squelch SLAPP Suits
WRAL TechWire
Madey v. Duke University - The Scrap About Patents Heard Around the World
WRAL TechWire
PTO Reexamination Proceeding ... An Inexpensive Alternative to Patent Litigation
WRAL TechWire
US Patent and Trademark Office Celebrates a Pair of Milestones
WRAL TechWire
'Shop Rights' -- Another Trap That Inventors Must Be Aware of and Deal With Early
WRAL TechWire
Inventors Beware: Don't Make a Mistake and Leave Your Patent Rights at the Office
WRAL TechWire
Inventors Beware: Don't Be in a Rush To Hire an Invention Promotion Firm
WRAL TechWire
Design Patents for Computer Screen Icons - Another Tool to Protect Your Innovation
WRAL TechWire
Protecting Discoveries: House of Representatives Passes CREATE Act
WRAL TechWire
Design Patents ... Are You Overlooking This Tool to Protect Your Invention?
WRAL TechWire
Patent Fees: Misapproriation by Any Other Name Smells Just as Rotten
WRAL TechWire
Speaking Engagements
Provisional Patent Applications, The Good, The Bad, and the Ugly, SBTDC Webinar, Webinar
SBTDC (North Carolina Small Business Technology Development Center)
Address the proper use of a provisional patent application and the problems when an inadequate disclosure is submitted.
Patent Issues for Triangle Angels Partners., Presentation to Monthly Meeting of Triangle Angel Partners, Research Triangle Park, North Carolina
Triangle Angel Partners
Overview of intellectual property tools and strategies.
Protecting Your Competitive Advantages., You Grow Girl Annual Business Summit, Charlotte, North Carolina
Discuss the concept of a competitive advantage and the various intellectual property tools for protecting the competitive advantages.
Teach entrepreneurs DIY skills with online tools for patent searching.
Patent Searching for Entrepreneurs, Triangle TechBreakfast Event at RTP Frontier, Research Triangle Park, North Carolina
Triangle TechBreakfast
Teach entrepreneurs DIY skills with online tools for patent searching.
Patent Primer for Non-Patent Attorneys, Law to the People - Continuing Education Webinar for Attorneys, Webinar
Law to the People
Three-hour continuing education course for attorneys to explain patent concepts.
Finding and Assessing Relevant Patents and Pending Applications, Launch the Venture Progam Series, Kenan-Flagler Business School- University of North Carolina at Chapel Hill
Kenan-Flagler Business School- University of North Carolina at Chapel Hill
Review what a patent is and how it can be used. Emphasize the difference between: Patentability--Ability to get a new patent and Freedom-to-Operate against existing patents and patent applications ahead of you in the pipeline. Work with finding patents and applications. Use PTO Public PAIR to get additional details on the patent application.
Finding and Assessing Relevant Patents and Pending Applications, SBTDC Webinar, Webinar
SBTDC (North Carolina Small Business Technology Development Center)
Patent process including the public tools to search for issued patents and published patent applications.
High Level View of the Patent Process., Presentation to Class of ECE 299, Pratt School of Engineeing, Duke University, Durham, North Carolina
Pratt Engineering School, Duke University
Teach engineers how the patent system can be used to protect innovations.
If you want them to hear you, speak their language., Lunch Presentation to Duke Law and Entrepreneurship Society, Duke Law School, Durham, North Carolina
Law and Entrepreneurship Society
Teach law students how to speak to entrepreneurs in an accessible way rather than making the lawyer-like noises that they learn in law school.
Protecting Your Competitive Edge, ProductCampRTP Weekend, Research Triangle Park, North Carolina
ProductCampRTP.org
An element of success in a new product is that the product is in higher demand than competing products or can be made less expensively than competing products (or both). Those elements form a competitive edge that your company can convert to increased margins or increased market share (or both). But a failure to protect these competitive edges may lead to their erosion as they are adopted by others. Learn to identify and protect competitive edges.
Protecting Your Competitive Edge, North Carolina Nanotechnology Commercialization Conference, Raleigh, North Carolina
NC Board of Science & Technology & SBTDC
Provide insights on why a company should seek patent protection and when they need to initiate contact with a patent attorney.
Protecting Your Competitve Edge, 2007 SBIR National Conference, Research Triangle Park, North Carolina
SBIR National Conference
The end goal of an SBIR/STTR project is a commercialized product that is profitable. Above average profits come from having a competitive advantage. To protect the competitive advantage and to be attractive to investors, the idea may need intellectual property protection. Come learn the big picture concepts you need know now and learn the how to avoid SBIR pitfalls that can hurt long-term viability. Session will also cover issues revolving around the ownership of your intellectual property.
Protecting Your Competitive Edge, CED Entrepreneurs Only Workshop: IP Protection, Research Triangle Park, North Carolina
CEDNC.org
Explanation of the concept of a competitive edge and how the patent process can protect a competitive edge. Include guidance on the timing for seeking patent protection before it is too late.
Information Disclosure Statement Filings, Masters Engineerng Management Course of Patent Process, Pratt School of Engineeing, Duke University, Durham, North Carolina
Pratt Engineering School, Duke University
Practical advice on the process of selecting material for information disclosure statements and the duties of disclosure under 37 CFR 1.56.
Patent Law Tricks, Treats, and Scary Things, Conference hosted by Aurora Funds, Durham, North Carolina
Aurora Funds
Tricks, treats, and scary things with respect to the patent process and early stage companies.
Being Creative When Prosecuting Patents and Writing Agreements, American Intellectual Property Law Association Annual Meeting, Washington DC
American Intellectual Property Law Association (AIPLA)
A presentation and paper co-authored by Shannon Mrksich, Brinks Hofer Gilson Lione on the Create Act and the impact on joint research agreements with respect to the patent process.
Turning Your IP Into Dollars, Forum 2003- Emerging Intelligence, Chapel Hill, North Carolina
North Carolina Electronics Information Technology Association -
The ongoing cycle of identifying, protecting, using and commercializing intellectual property to increase corporate revenues. Kevin Flynn and Caroline Rockafellow will give practical advice on obtaining maximum value from intellectual property assets.
Intellectual Property Issues: Opportunities and Pitfalls, SBTDC SBIR Workshop, Research Triangle Park, North Carolina
SBTDC (North Carolina Small Business Technology Development Center)
Explanation of the intellectual property and regulatory framework that envelopes the SBIR grant recipient company. Goal is to provide practical advice and triggers for when it is time to get help from a patent attorney.
Certifications
AV Preeminent™ Peer Review Rated
Results of Peer Reviews compiled by Martindale-Hubbell
Professional Engineer License (now expired)
North Carolina Board of Examiners for Engineers and Surveyors
Registration as Patent Attorney
United States Patent & Trademark Office
Websites & Blogs
Website
FLYNN IP LAW website
Website
LinkedIn Profile
Blog
Samples of My Patent Work
Blog
PowerPoint slide set on Patent Searching for Entrepreneurs
Blog
PowerPoint slide set on what should be in Provisional Patent Applications
Blog
PowerPoint slide set on Protecting Your Competitive Advantages
Legal Answers
383 Questions Answered

Q. If a patent is assigned to a company, would the inventor get royalties or just the company?
A: If your father was employed by a company and made inventions as part of his normal job duites, then the employer might consider your father fully paid in that he received his paycheck. As a paid to invent employee, the money paid by the company to your father would serve as consideration for the assignment to move your father's rights over to the company and they would not need to offer any other payment or royalty. In that case, there would not be any additional payments to your father for the invention. Some companies have patent programs where they give a small award to each inventor for each patent that is issued. Universities often have programs to encourage professors to file patent application in that they do share some of the license fees that come to the university with the inventors. But this is the exception rather than the rule. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. I manufacture a simple/basic toilet seat cover. Is it safe to manufacture without violating any patents.
A: I agree with the first answer. To further reduce your risks you can go to a plumbing supply store and look at the toilet seat covers. To the extent that any are marked with a patent, take a photo with your phone and look up that patent later. The manufacturers are apt to put their patent number on the product or the material that wraps the product or they risk losing the rights to seek damages. You can also do some other searching using free tools and tips from my slide set at http://bit.ly/Patent_Searching. Thanks for trying to do the right thing and stay clear of patents. Kevin E Flynn
Q. Hello, I'm looking to patent a product. I've seen something similar however I'd like clarification, then will patent
A: One of the hurdles for a patent claim is to show that it is new and thus does not cover anything that has already existed in reality or on paper. That is not the hardest hurdle. The hurdle that is the toughest is whether the changes from what previously existed to what you disclose would be deemed obvious to a hypothetical expert in that field who is not inventive. Would this person with all necessary skills and experience be able to view every relevant bit of information that existed since the beginning of recorded time and find a way to make what you disclose? By the way, the hypothetical expert (one of ordinary skill in the art) knows all languages so that is not a barrier to combine references from different parts of the world. I do not know all relevant prior art so I do not know whether you will be able to surpass the obviousness hurdle. What you have sounds promising but you may want to do some preliminary searching using free tools and some search tips from my slide set. http://bit.ly/Patent_Searching (There are links to other slide sets at https://www.flynniplaw.com/resources/flynn-ip-law-links ) If you want to see a broader set of patent examples that show my style when seeking patents, you can see some here. http://bit.ly/Patent_Examples The patent process is expensive so you want to think twice before starting down that route. It seems to be a waste to do this halfheartedly and spend half the money and reduce the likelihood of getting a commercially meaningful patent. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. If a person doesn't have a will but has sole rights to a patent, does Florida probate assign the nearest kin the IP?
A: The patent system does not have special inheritance rules. The property passes in accordance with local law.
Q. If the patent is from over 20 years ago, can one proceed with manufacturing a similar product?
A: Assuming that you are correct that the patent is expired, then the smart move would be to look for newer patents to that cite the patent you have found. Tips on how to do that are at http://bit.ly/Patent_Searching. You may want to check for other patents on this product by checking the assignee database (explained in the slide set). Good luck. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. decorating false fingernail to sell, can a provisional patent application be filed, for process, false fingernail use
A: You can file a provisional patent application and say patent pending for a year but that may not be a long-term fix. In order for the patent process to be valuable to you, you need to get claims in a non-provisional application through the examination process. You will need to show that what you have done is not only new but someone skilled in this sort of thing who has access to everything ever done in this field could not recombine other ideas to get to your idea. This is the requirement that your idea be non-obvious. This is a very tough standard. I suggest that you look at recently issued patents in this field to see what you are up against. Here are some tips on using the free tools. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. Patent lawyer needed. Want to see if the idea I have for a new style of electrical box is already patented
A: You may want to review this slide set on how to do some preliminary searching on your own. http://bit.ly/Patent_Searching You may find that your idea is patented or was at least published as a pending application. As noted in the slide set, you will not be able to see all the applications that are on file but have not yet been published as an application or issued as a patent. So you can reduce your risk of filing an application for an idea already on file but you cannot reduce that risk to zero. I hope that this helps. Kevin E Flynn
Q. Can I take someone’s patent if it’s abandoned?
A: If you mean by "take" that you can pursue the patent process and obtain an issued patent and preclude others from practicing the invention. The answer is no as you were not the first to invent whatever is in the abandoned patent. If you mean by "take" that you can make or use the ideas in the abandoned patent application, then the answer is yes as an abandoned application cannot be used to stop you from doing what is in that application. (There may be more basic patents out there that apply but that is not your question). Beware that the patent process in the US is fairly lenient in allowing someone to claim that the failure to act in time to prevent an abandonment was unintentional. With the payment of a fee, a person can restart the process. This happens all the time in failures to pay the maintenance fees. So you may want to consult with a patent attorney to look at the precise facts that led to the abandonment to see if there is any argument that the failure to act was unintentional. You may find that the patent application was abandoned as someone else had already patented this idea. Now you need to sort out whether that earlier patent is still in force. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
Q. Does this form of business protect my right internationally, to say I patent articles under the name of the corporation
A: We do not have an option for an international patent. (Yes, I know many people write that they have an international patent, but they are wrong). We have a type of patent application that is the front end for many patent system. This is called a Patent Cooperation Treaty Application (PCT Application). Some people refer to a PCT application as an international patent but it is not a patent in that you cannot sue anyone for infringing this application. After a delay afforded by using the PCT process, you still need to obtain patents in the individual countries. A patent covers activities within a particular country that involve a good or service covered by one or more claims of the patent. For example, a US patent can be used against those who make, use, import, sell, offer to sell, or simply have a particular product within the US. Other countries have similar rules. A US patent would cover something made in China and sold in the US or something made in the US and sold to Canada. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn
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Post Office Box 4655
Chapel Hill, NC 27514
USA
Telephone: (919) 818-9147
Cell: (919) 818-9147