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George F. Wheeler
Tel. (312) 775-8000
Patent Reexamination and Reissue; Patent Protection; Patent Preparation and Prosecution; Chemical Patents; Medical Patents; Pharmaceutical Patents; Mechanical Patents; Patent Infringement; Patent Licensing; Trademark Opinions; Trademark Prosecution.
University of Wisconsin, B.S., Chemistry, 1974
University of Wisconsin, J.D., 1977
John Marshall Law School, LL.M., Intellectual Property Law, 1991
Admitted to practice in Wisconsin, Ohio, and Illinois. Member of the bars of the 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. Registered to practice before the U.S. Patent and Trademark Office.
George Wheeler has counseled corporate clients for over 25 years in a wide variety of patent matters involving diverse chemical, mechanical, and medical technologies, including over 25 ex parte reexaminations and several inter partes reexaminations. His specialty is patent analysis and prosecution, both for patentees and for opponents of patents.
In 2011, George was designated as a “Top Patent Prosecutor” by PatentBuddy®, an honor achieved by only 2% of United States patent practitioners.
George’s accomplishments for clients include:
• Defending a patent owner client 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 our client to obtain a stay of pending litigation respecting the patents while launching its product.
• Preparing a “Markman” claim construction brief relied on by a federal district court judge as providing the proper construction of the claims being tried.
• Improving upon a U.S. patent already involved in litigation by obtaining a broader patent that was successfully asserted in the same litigation.
• For two different clients, successfully opposing an opponent’s blocking European patent to open up the European market for a client’s principal product.
• Successfully prosecuting numerous patent reexaminations (both for the patentee and for opponents), reissue proceedings, and interferences.
• Acting as an expert witness defending another prominent patent firm accused of malpractice during prosecution of original and reissued patents.
• Preparing numerous legal opinions counseling clients how to proceed commercially, how and whether to litigate, or how to structure a license.
• Obtaining hundreds of patents for many clients.
George’s other recent 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.
• 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.
George has previously worked a total of nine years as an in-house patent attorney at two corporations – The Procter & Gamble Company and Morton Thiokol, Inc.
Coping With The New USPTO Rules, presented to the Intellectual Property Law Association of Chicago and the Chicago Bar Association, September 2007.
Continuation And RCE Practice, presented at American Intellectual Property Law Association program, “Practical Patent Prosecution Training for New Lawyers,” August 2007.
Patent Claiming and Prosecution Strategies for Surviving Proposed USPTO Rule Changes, presented to the New Jersey Intellectual Property Law Association, September 2006.
Continuation and Request for Continuing Examination Practice, 2006 Practical Patent Prosecution Training for New Lawyers, AIPLA, August 2006.
April 2006 Roundtable: Reexamination in the US: An Effective Business Strategy, Association of Patent Law Firms webcast, April 2006.
Regular speaker in the Practical Tips programs presented by the Young Lawyers Committee of the Section of Intellectual Property Law of the American Bar Association on reexamination, reissue, and patent claim drafting (2003 to present).
Patent Ownership and Claim Interpretation (Moderator), AIPLA Mid-Winter Meeting, January 2003.
Ten Tips and Tricks For Patent Preparation and Prosecution, 2002 Intellectual Property Spring Seminar, Institute of Continuing Legal Education, Michigan Technological University, March 2002.
Determining a Patent Term Adjustment Under the AIPA, AIPLA Annual Meeting, October 2001.
Recent Case Developments, American Chemical Society Annual Meeting, August 2001.
Patent Term Adjustment Under the American Inventors Protection Act -- How, Why, Tracking, Calculating. AIPLA special program on American Inventors’ Protection Act of 1999, July 2001. Also presented at Intellectual Property Owners (IPO) Annual Meeting, November 2001, and at other venues.
How 18-Month Publication Affects Litigation, Recent Patent Rules: Implementation, Litigation and More, DePaul College of Law Center for Intellectual Property Law, February 2001.
99 Precedential Federal Circuit Decisions in 2000, Chicago Bar Association, Patent, Trademark, and Copyright Committee Meeting, April 2001.
How to Benefit from the "Patent Term Guarantee" Provisions of the American Inventors’ Protection Act of 1999, AIPLA Annual Meeting, October 2000.
89 in 99: Precedential Federal Circuit Decisions in 1999, John Marshall Law School, April 2000.
Step-Plus-Function Claims, presentation to AIPLA Chemical Practice Committee, February 1999.
Recent Chemical, Biotechnological, and Medical Device Decisions, presentations to AIPLA Chemical Practice Committee on October 1998, February 1999, April 1999, and October 1999.
Advanced Seminars on Claim Drafting: Chemical Break Out Session (Moderator and Presenter), AIPLA Annual Meeting, October 1998.
Drafting Chemical Patent Claims in View of Recent Federal Circuit Cases, AIPLA BULLETIN, July-August-September 1996, pp. 817-828.
Restriction of Markush Claims, presentation to the AIPLA Chemical Practice Committee, October, 1990.
Patent Term Adjustment Provisions of the American Inventors' Protection Act, JOHN MARSHALL LAW SCHOOL CENTER FOR INTELLECTUAL PROPERTY LAW NEWS SOURCE, Vol. III, No. 4, Winter 2002.
The History And Current Status Of The Intent Requirement For Liability Under 35 U.S.C. § 271(b), Master’s Thesis, John Marshall Law School, May 1991.
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