From Idea to Innovation: What Does it Take?

January 28, 2022, 12 - 1 pm

• Event Recording
• Presentation Slides
• IP Checklist

J. Peter Paredes, JD
Intellectual Property/Patent Attorney

Peter has over 16 years of experience in all aspects of patent prosecution, litigation, licensing, and counseling. Peter developed patent portfolios for clients resulting in five acquisitions or licensing arrangements for over $150 million. Peter works with startups, universities, and investment firms to provide strategic intellectual property acquisition, licensing, and enforcement.

An accomplished patent prosecutor, Peter brings broad experience and skills to his patent law practice. Peter actively manages international patent portfolios, and works closely with clients to accomplish patent strategies aligned with their business outcomes. Peter’s understanding of IP strategy, licensing, and fund raising adds an extra dimension in counseling clients on IP prosecution issues. Peter identifies potential licensing opportunities and crafts strategies to avoid exposure to potential blocking patents. Peter frequently provides opinions on freedom to operate, patentability, competitive patent portfolios, and other complex strategic IP issues.

Peter monitors competitive portfolios to remain aware of potential threats to client’s business development plans, products, and patent portfolios. Peter is proactive in devising licensing, avoidance and enforcement strategies in response to the potential threats. Peter assists clients by negotiating and drafting license agreements, technology transfer agreements, acquisition and sale agreements, confidentiality and consulting agreements and clinical trial agreements.

Peter serves as an Ops team member for Smart Health Catalyzer, where he mentors and forms startups accelerating the commercialization of therapeutics, diagnostics and medical devices being developed at Midwest universities and research hospitals.