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George F. Wheeler
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George Wheeler has counseled corporate clients for more than 25 years in a wide variety of patent matters, securing hundreds of patents in such industries as chemical, mechanical and medical technologies. His specialty is patent analysis, both for patentees and for opponents of patents, and prosecution and strategic development of high-value patent portfolios. His work also includes over 25 post-grant patent review proceedings in the U.S. Patent and Trademark Office.

George’s accomplishments for clients include:

  • Defending a patent owner against three merged reexamination requests by filing an appeal resulting in confirmation of all the original claims of the patent without amendment;
  • Prosecuting four reexamination requests against an opponent’s related patents to final rejection, thus allowing the client to obtain a stay of pending litigation while launching its product;
  • Improving upon a U.S. patent already involved in litigation by obtaining a broader patent that was successfully asserted in the same litigation;
  • Successfully opposing an opponent’s blocking European patent to open up the European market for a client’s principal product;
  • Prosecuting numerous patent reexaminations successfully for both patentees and for opponents;
  • Acting as an expert witness respecting prosecution of original and reissued patents; and
  • Preparing numerous legal opinions counseling clients how to proceed commercially, how and whether to litigate, or how to structure a license.

George’s other professional accomplishments include: election as Secretary of the American Intellectual Property Law Association (AIPLA) (2003-2006); election as a member of the Board of Managers of the Intellectual Property Law Association of Chicago (IPLAC) (2006-2008); serving as Chair (2001-2003) and Vice Chair (1999-2001) of the Chemical Practice Committee of the AIPLA; serving as Chair (2012-present) and Vice Chair of the U.S. Patents Committee of the IPLAC; public speaking to the AIPLA and local patent law committees and associations; teaching younger attorneys and agents how to prepare and prosecute patent applications and pass the Patent Office Examination; editing and presenting periodic summaries of all United States court decisions involving chemical, biotechnological, and medical technologies for the Chemical Practice Committee of the AIPLA.

Related Experience

  • In-house patent attorney, The Procter & Gamble Company
  • In-house patent attorney, Morton Thiokol, Inc.

Honors & Awards

  • “Top Patent Prosecutor” by PatentBuddy®, an honor achieved by only two percent of U.S. patent practitioners, 2011

Publications

  • IP Law and Sound Business Strategy, Today's General Counsel (April/May 2014). View File.
  • Patent Portfolio Strategy for the America Invents Act, 12 J. MARSHALL REV. INTELL. PROP. L. 289 (2013). View File
  • Washington Internet Daily
  • Brazil and Abbott Labs Reach Accord on AIDS Drug
  • NTP Patents Are Strong, National Law Journal (March 2006).View File.

Presentations

  • Chemical/Pharmaceutical Instructor, Advanced Patent Prosecution Workshop 2014: Claim Drafting & Amendment Writing, Practising Law Institute, September 2014
  • So You Have a Pre-AIA Patent Portfolio: How to Maintain Its Pre-AIA Status in 2014 and Beyond, Intellectual Property Law Association of Chicago (IPLAC), March 2014.
  • Developing and Growing Patent Portfolios, McAndrews, Held & Malloy Symposium on Intellectual Property Law, October 2013
  • The New America Invents Act Prior Art Rules: Why and How to Avoid Them, IPLAC, January 2013.
  • Claim drafting instructor for Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing, Practising Law Institute, May 2012.
  • Leahy-Smith America Invents Act: Prior Art Provisions, IPLAC, October 2011.

Areas of Practice

Industries

Bar Admissions / Registrations

  • Wisconsin
  • Ohio
  • Illinois
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Eastern and Western Districts of Wisconsin
  • U.S. Patent and Trademark Office

Education

  • John Marshall Law School, LL.M., Intellectual Property Law
  • University of Wisconsin, J.D.
  • University of Wisconsin, B.S., Chemistry