Richard W. Warner (Rick)

• Counsels in-house counsel of medical device company with over $17B in annual revenues on a range of intellectual property issues, including patent portfolio and prosecution strategy, freedom-to-operate analysis, product clearance and transactional matters
• Obtained patent protection and advised on an aggressive prosecution strategy for medical device company to obtain comprehensive protection for a division with over $645M in annual revenue
• Entrusted by foreign patent firms to handle United States patent and trademark prosecution matters, including providing advice on prosecution strategy, litigation and infringement issues, licensing issues and review of competitor patent portfolios
• Provided strategic advice to start-ups regarding how to gain cost-efficient patent protection for technology that can be used in a wide variety of applications
• Advised non-profit educational organization on trademark and copyright issues

Rick’s practice is global in scope, including clients from the U.S., Europe, China, Japan, Korea, India and Australia. He has been involved in a wide range of technologies, including medical devices, automotive and transportation, consumer products, electrical, computer and internet. Rick has a flair for immediately understanding his audience and their often specific needs.

Trained as an electrical engineer, Rick’s hands-on engineering and practical business skills enable him to work seamlessly with other engineers, inventors, scientists, in-house counsel and executives alike. With over a decade of experience as a partner at Harness IP, Rick has repeatedly developed IP portfolios and strategies that have increased his clients’ market share while meeting clients’ budgets of all sizes.

Industries of Practice

• Medical systems/devices: including navigation systems, neuromodulation and neurostimulation devices, cardiac/heart devices, implants, prosthetics, instruments, orthopedic applications, biologics, sports medicine and surgical techniques
• Automotive & Transportation: brake discs, solenoids, cable cantilevers, seating, electromagnetic actuating elements and automotive controllers
• Electrical, Computer, & Internet: centralized computing systems, database and server retrieval systems, battery packs and controllers in the medical arts areas
• Consumer products: ranging from container caps and dispensers, to industrial and residential lighting, textile manufacturing, knitting machines, rifles and ammunition

Areas of Practice

• Preparation and prosecution of domestic and foreign patent and trademark applications, including design patents, patent reexamination and reissue matters
• Preparation of formal opinions, including patentability, state-of-the-art, invalidity and non-infringement opinions
• Product design arounds, clearance and freedom-to-practice analysis and opinions
• Due diligence analysis
• Review of state-of-the-art landscapes to identify and advise clients with respect to open areas of patentability, including identifying additional development opportunities
• Litigation support for a variety of intellectual property matters, including enforcement, licensing and prosecution strategy

Engineering Background

• Electrical Engineer at Chrysler Corporation in the Advanced Electrical / Electronic Design and Development Group

• Experience at Chrysler included advanced system design and testing, where Rick was awarded a U.S. patent for an electromagnetic compatibility test device that he developed
• Electrical Engineer at American Yazaki, a tier-one automotive supplier, where Rick worked in the fields of distribution systems and multiplexing technology, as well as computer hardware and software

Awards & Distinctions

• Corporate Counsel U.S. Legal 500, Volume II, Nominated “Leading Lawyer,” Intellectual Property, Technology, Media & Telecoms
• Patent Buddy/Patent Research Review, “Top Patent Prosecutor,” 2011, 2013
• M&A Award, The Corporate America News 2015
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• American Jurisprudence Award
• Justice Frank Murphy Honor Society
• Eta Kappa Nu Electrical Engineering Honor Society

Memberships

• American Intellectual Property Law Association
• Michigan Patent Law Association