Kevin Tamm focuses his practice on transactional intellectual property issues for large and mid-size corporate clients. His representation includes patent prosecution regarding chemical and mechanical arts, trademark prosecution and oppositions along with copyright registration; post-grant reviews, including inter partes reviews; intellectual property issues in mergers and acquisitions, licensing and freedom to operate. Kevin counsels and represents his clients in the areas of patentability and intellectual property asset management, specifically in the fields of energy, oil and gas, petrochemicals, specialty and organic chemicals, control systems, medical devices and small molecules. He also has experience prosecuting United States and foreign patents for large corporate clients, universities and independent inventors, and is admitted to practice before the United States Patent and Trademark Office (USPTO).
A unique quality that Kevin bring to his practice is his background in chemical engineering. He held a chemical associate position at an engineering consulting firm after earning his bachelor’s degree in chemical engineering. While in law school, he was also a legal extern for the Honorable Michael R. Barrett in the U.S. District Court for the Southern District of Ohio, and worked in the legal department of GE Aviation.
Recent Notable Matters
Cornerstone Building Brands, Inc. — acquisition of Prime Window Systems, LLC
Upper Bay Infrastructure Partners — acquisition of Tidewater Transportation & Terminals, a multi-commodity transportation, terminal, and marine construction and repair company serving the Pacific Northwest, from Stonepeak Infrastructure Partners. Upper Bay Infrastructure Partners was the lead investor of a group consisting of Ullico, funds and accounts under management by BlackRock, Silverfern and certain other co-investors.
FPUSA — filing two inter partes review petitions, both of which were instituted on all challenged claims
Publications and Speeches
"Licensor and Licensee Patent Marking Duties and Available Infringement Damages in light of Federal Circuit’s Arctic Cat v. Bombardier," LES, May 29, 2020
“Strategic Licensing for Business Development,” LES, April 23-24, 2020.
"Inter Partes Review Changes How Patent Cases Are Appealed," Texas Lawyer, May 16, 2018.
“Differing IP Enforcement on Three Continents,” Today’s General Counsel, December 2015.
“Effective IP Enforcement Is Taking Shape In China,” Law360, October 2015.
“Protecting Intellectual Property Rights in China,” Asian Oil & Gas, August 7, 2015.
“Checking It Twice: Verify Facts and Arguments on Prior Art to Avoid Inequitable Conduct in Patent Prosecution,” Faegrebd.com, September 2014.
“What is the Federal Circuit’s Issue with USPTO Patent Reexamination Proceedings?” Cincinnati Law Review, Vol. 81, No. 1103, June 2013.
“Practical Considerations for Using Evidence of Unexpected Synergistic Results in Patent Prosecution,” UC Law Review Blog, April 2013.
“The Class Action Fairness Act and ‘Colorable Reasons’ for Separate Class Actions,” Cincinnati Law Review, Vol. 81, No. 313, February 2013.