Kevin G. Mierzwa

Principal / Detroit Metro Office

Kevin is known for increasing the value of companies by building highly effective intellectual property portfolios. Whether start-up or Fortune 500, Kevin helps companies tactically use patents and trademarks in obtaining financing, licensing competitors, finding strategic partners, and blocking competitors. Valued for his out-of-the-box thinking, Kevin harnesses the power of brainstorming sessions to develop strategic domestic and international IP portfolios. He is also dedicated to ongoing education regarding the law and how it impacts each of his client’s specific long- and short-term objectives.

Prior to working at Harness IP, Kevin worked his way up at the Ford Motor Company from engineer, to patent agent, to patent attorney. Over the last two decades, Kevin’s practice has expanded beyond the automotive industry and into the electronic, computer, and mechanical areas, a sampling of which includes electronic media, computer interfaces for electronic media including virtual reality and touch screen applications, reverse osmosis, optics, lighting, sporting goods, and medical devices. Kevin also has extensive experience in the aerospace and satellite industries, from constellations and deployment patents to control electronics and satellite system patents. His broad IP practice ranges from client counseling, to patent and trademark prosecution, to competitive analysis, to licensing and other IP related agreements.

Background

Background

Ip collaborative brainstorming sessions

Careful IP and patent management should be a goal for start-ups and Fortune 500 companies alike. Typical brainstorming is used in a product development scenario, but oftentimes development engineers and management do not fully explore less obvious ways to increase the value of the new product and intellectual capital.

No one wants to leave valuable intellectual property rights on the table, which is why Kevin often engages in IP brainstorming sessions. An IP plan resulting from a brainstorming session can offer a valuable way for stakeholders to expand the portfolio to cover future products, as well as develop strategies to block others from using alternatives.

Kevin has used patent brainstorming sessions successfully in various scenarios. Brainstorming is typically thought of as a process for obtaining information for a patent application. Kevin has used this process before filing, after filing, and after allowance of a patent application. Below are a few examples of Kevin’s many successes.

Before filing, Kevin helped a sole inventor develop and expand an initial idea into a cost effective patent portfolio. This ultimately led to the inventor receiving start-up funding. As the strength of the portfolio expanded, he was able to attract further investment by a Fortune 500 partner, which led to a manufacturing partnership and successful product launch. Another sole inventor launched a successful initial public offering which was bolstered by the patent and trademark portfolio.

Another way Kevin has used brainstorming is in post allowance of a patent. Continuation patents are only able to be filed before issuance of the allowed patent. In one matter, when a patent was identified as a key technology, Kevin formed a group with internal patent attorneys to file a continuation with hundreds of claims to block others from circumventing the original patent claims.

Kevin has also brainstormed with a group of engineers to generate and ensure patent coverage before a product was introduced. The group initially developed a preliminary plan which was acted upon and subsequently, after product clearance searching, the need for a second brainstorming session was recognized. This led to further areas of coverage being obtained, resulting in powerful patents in an active industry segment.