199 Main Street
Burlington, VT 05402-0190
Patent Attorney – technical depth, client focused.
Kevin McGrath works with clients to maximize the value of their Intellectual Property and has experience with drafting and prosecuting patent applications, providing freedom to operate and non-infringement counseling and opinions, and patent and trademark litigation. Kevin’s litigation experience includes both district court actions as well as proceedings before the USPTO Patent Trial and Appeal Board. Kevin regularly drafts and prosecutes utility and design patents in a variety of technology areas including turbomachinery, outdoor sports equipment, medical devices, automotive engine and transmission components, video and lighting systems, and software, among others. Kevin also helps clients obtain trademarks for a variety of products and businesses.
Having worked for six years as a mechanical engineer for the Lockheed Martin Corporation (LMCO), Kevin brings a strong engineering background to his practice. His experience at Lockheed included nuclear reactor thermal hydraulic design, acoustic testing of permanent magnet motors, and ceramics processing development, as well as leadership and project management training as part of the LMCO Engineering Leadership Development Program. Kevin’s extensive engineering experience makes him uniquely equipped to understand a client’s product development strategies and technical challenges.
Kevin’s representative matters include working with clients to identify and characterize inventions, drafting and prosecuting patent applications and license agreements, and providing counseling and opinion relating to infringement, freedom to operate, USPTO post-grant trials, and federal court litigation. Here are some examples:
- Has obtained a large number of utility and design patents in a variety of technology areas for clients ranging from independent inventors to Fortune 500 companies.
- Regularly works with clients to navigate allegations of infringement, including identifying non-infringement positions, guiding clients on how to respond to allegations, and assessing options for invalidating patents via the USPTO’s post-grant procedures.
- Regularly provides non-infringement and invalidity opinions for both utility and design patents for clients during product design and in advance of product launch.
- Has a variety of patent and trademark litigation experience, including Covered Business Method Review, Post Grant Review, and in Federal district court in the areas of discovery, motion practice, Markman hearings, and developing witness testimony.
- Drafted bench memos and draft Opinions in patent cases involving claim construction, validity, infringement, and res judicata issues while a full time intern for the Chief Judge of the Court of Appeals for the Federal Circuit.
- Advised clients on proper employee and independent contractor agreements and drafted employee and independent contractor agreements to ensure proper ownership of IP.
The George Washington University Law School, J.D., cum laude, 2011 Submissions Editor, The Federal Circuit Bar Journal
Union College, M.S. Mechanical Engineering, 2008
Syracuse University, B.S. Mechanical Engineering, summa cum laude, 2002
U.S. Patent and Trademark Office, 2011
U.S. District Court, District of Massachusetts, 2012
- Home restoration and renovation
- Alpine, Nordic, and backcountry skiing
- Mountain biking
What is a Foreign Filing License, January 2019
Are You Sure You Own That Patent? February 2018
Can Inventorship Be Challenged in a PGR Proceeding? December 2016
199 Main Street
Burlington, VT 05402-0190ph: 802-863-2375