Kimberly McLean

Kimberly McLean

Kimberly McLean, the founder of the firm, has more than 15 years of experience in patent prosecution. As a former primary patent examiner, Kimberly McLean has knowledge of the inside workings of the Patent and Trademark Office (PTO), and understands how to achieve success with the PTO.  Kimberly holds an advance degree in electrical engineering studies, and therefore, has specialized expertise in patents for electrical, electromechanical, mechanical, software and business methods inventions.  In addition, Kimberly has registered copyrights, performed trademark searches, filed applications for trademarks, negotiated and drafted licensing agreements.

  • Former Primary Patent Examiner
  • Advanced Degree in Electrical Engineering
  • Registered to practice before the United States Patent and Trademark Office
                                       BAR ADMISSIONS AND REGISTRATIONS

Bar Membership – Maryland, District of Columbia, and Virginia

Registered to practice before the United States Patent and Trademark Office

                                                               EDUCATION

University of Baltimore School of Law, Baltimore, MD

J.D., January 2007

State University of New York, Binghamton, NY, M.S. Electrical Engineering

Morgan State University, Baltimore, MD, B.S. Electrical Engineering

                                                              EXPERIENCE

Private Practice Attorney, Baltimore, MD

Draft and prosecute utility patent applications in the technology areas of business methods, robotics, medical devices, electro-mechanical devices, software, wireless networks, telecommunication systems, draft and prosecute design patents, draft and review technology contracts, assist with term sheet negotiations, start-up and entrepreneur services, incorporation and entity selection, perform non-infringement opinion analysis, perform patentability searches and analysis, perform freedom to operate analysis for design and utility patents, and counsel clients on licensing and various intellectual property issues.       

Attorney, Washington, DC

Drafted and prosecuted utility patent applications in the technology areas of business methods, graphics processing, computer architecture, software, wireless networks, telecommunication systems, RFID technology, encryption, medical devices, and electro-mechanical devices, drafted and prosecuted design patents, drafted and reviewed contracts for licensing and technology transfer, registered trademarks, registered copyrights, performed freedom to operate analysis for patents, performed trademark clearance analysis and searches, established business entities, drafted operating agreements, counseled clients on licensing and various intellectual property issues, assisted with various aspects of litigation, such as researched relevant law, and drafted pleadings, memorandums of law and appeal briefs.

Patent Attorney, Alexandria, VA

Prosecuted patent applications in the technology areas of graphical user interfaces, business methods, software, cameras, printers, wireless networks, electrical control units, printer/copier/scanner units, telephone networks, memory devices, electro-mechanical devices, RFID technology, encryption, medical devices, drafted patent applications, conducted clearance/freedom to operate analysis and counseled clients on various IP

 Primary Patent Examiner, Alexandria, VA

Researched and examined patent applications to determine patentability of claimed inventions including searched electronic databases for prior art, compared prior art with the claimed invention to make novelty and non-obvious determinations, drafted office actions to indicate the results of the examination, conducted interviews with attorneys to expedite prosecution of applications and drafted examiner’s answers for applications appealed to the Board of Appeals.

Design Engineer, Dallas, TX

Designed printed wiring boards using Mentor design tools, designed FPGAs using AHDL and VHDL, performed extensive testing of printed wiring boards to verify functionality, wrote design specifications for printed wiring boards, participated in design reviews for printed wiring boards and FPGAs.

Computer Engineer, McLean, VA

Researched ways to reverse engineer object code for various microprocessors and conducted feasibility analysis for identifying modems based on signatures.