Kevin E. Flynn

Still an engineer at heart, I help companies seek strong patent protection to arm against me-too products and stay clear of third-party patent rights.

I am the right choice for the right client, but not everyone needs the same sort of patent attorney.

Some clients want to just file something so that the client can say "patent pending" without caring about actually getting a useful patent. I am not a good fit for such clients as I want to be in it to win it.

Some clients want to file a patent application although they have no idea how to make the novel product. They see the patent process as a lottery ticket where you stake a claim for a type of product and hope for a big payoff. That is not how the system works and not how I work.

Some clients want to crank out lots of very narrow patent applications where the patent attorney essentially re-formats a fairly comprehensive invention disclosure form that has been vetted by the internal patent attorneys on a patent committee. They want someone to crank out narrow applications while minimizing expenses. They have reduced new patents to a numbers game as the company has lots of patents already. No budget for creativity. Someone with less skill than me can handle that routine work.

Some clients are building a business and know that having a strong set of patents will move the needle on the value of their company as strong patents will help protect margin and market share by keeping others from selling me-too products. They want a patent attorney that is an external team member that helps the company spend money wisely while seeking patents that have commercial significance. They want someone with sufficient engineering skills to understand their technology and communicate the technology to a patent examiner. This is the type of client that I am well-suited to help.

if you want an engineer with a broad set of skills to help you seek patents or stay clear of others' patent rights, then we should talk.

• Patents

• Free Consultation
  Selecting a patent attorney is a major decision as the process is expensive and you will need to work closely with your patent attorney. You should definitely check to ensure that you have good working chemistry with a patent attorney before deciding on an attorney. I am happy to talk with you about the process and the costs without charging you for this general information. This general discussion will not go into your invention in depth and the chances that your particular innovation will be deemed patentable over the relevant prior art.
• Rates, Retainers and Additional Information
  I have been doing patent work since 1992 and worked as an engineer for years before going to law school. My hourly rate is not as low as someone just out of law school. On the other hand, I am much more efficient than someone still learning the craft. You total cost is impacted by efficiency. As I own my firm, I can cut a bill when that is the right thing to do. Large firms often have lots of barriers to preclude cutting a bill even when the bill is larger than it should have been. My clients stay with me for years as they see my fees as reasonable in light of the value I provide.

New York

Since 1993

North Carolina

Since 1996

United State Patent & Trademark Office

Since 1993

Patent Attorney

FLYNN IP LAW

2011 - Current

In 2011, founded a law firm to provide specialized legal advice regarding intellectual property, particularly domestic and foreign patent rights, and related business issues. NOTE -- the legal name of the firm is The Law Offices of Kevin E. Flynn, PLLC.

Patent Attorney

The Eclipse Group

2005 - 2011

Joined The Eclipse Group LLP, a national law firm of seasoned attorneys that specialize in intellectual property with an aim to provide exceptional results at reasonable rates. Helped create and maintain a large portfolio of patents relating to spine surgery and spinal implants. Worked with a number of other medical device clients. Worked to manage patent firms outside of the United States to help clients acquire patent assets in both the US and abroad.

Patent Attorney

Daniels Daniels & Verdonik

1998 - 2005

Patent attorney at a firm that specialized in helping set up and support the growth of high technology companies. Obtained extensive experience helping companies examine patent issues for the first time. Helped companies prioritize IP expenditures to get the most bang for their limited budget. Handles all aspects of patent prosecution from strategy and initial patent drafting through the patent prosecution in both the United States and outside the United States.

Patent Attorney

Moore & Van Allen

1996 - 1998

Patent litigation and patent prosecution, general intellectual property counseling for a range of clients from small start-ups to sizeable longstanding companies.

Patent Litgation Associate

Fish & Neave

1992 - 1996

Patent attorney, primarily patent litigation support for large patent litigation such as the disputes between Altera and Xilinx; also wrote patent applications and responses to office actions from patent agencies; opinion work on scope of claim coverage and infringement or non-infringement.

Engineer -- series of positions with increasing responsibility.

Duke Power Company - Now Duke Energy

1982 - 1989

Series of postions over years working with industrial equipment to generate electricity, instruments to measure thermodynamic performance, computer systems to monitor and control projects. Obtained North Carolina Professional Engineer License while working for Duke Power.

Duke University School of Law

J.D. (1992)

1989 - 1992

Honors: Graduated cum laude Winner of Melvin G. Shimm Award for work as Articles Editor.

Activities: Editor on Law Journal - Law & Contemporary Problems.

California State University - San Jose State University

M.S. (1985) | Industrial & Systems Engineering

1984 - 1985

Honors: Graduated summa cum laude and admitted into Tau Beta Pi

Duke University

B.S. (1982) | Completed the requirements for a BSE in both Biomedical Engineering and Mechanical Engineering.

1978 - 1982

Honors: Elected Dormitory President 1978.

Patents I wrote were allowed and Issued

United States Patent & Trademark Office

2016

I am most proud of the work I do for my clients to draft and often obtain patents that describe and claim their inventions. The award link takes you to the USPTO site to see a sample of my issued patents.

AV Preeminent®--the highest rating awarded

Martindale-Hubbell

2011

The Martindale-Hubbell® Peer Review Ratings™ help you, the consumer of legal services, identify, evaluate and select the appropriate lawyer for your legal issue. Peer Review Ratings™ identify lawyers with the highest ethical standards and professional ability. The ratings can be a useful aid when hiring an attorney.

Named as being in the Legal Elite for the category of Patents

Business North Carolina

2004

Since 2002, Business North Carolina magazine has honored Tar Heel lawyers by publishing Business North Carolina’s Legal Elite, a listing of the state’s top lawyers in business-related categories. Winners are chosen not by BNC editors but by the state’s lawyers. Business North Carolina’s Legal Elite has become the model for other awards and lists, but it remains unique as the only award that gives every active lawyer in the state the opportunity to participate. Business North Carolina’s Legal Elite includes the top lawyers chosen using this statewide ballot. Each year, BNC sends ballot notices to every member of the N.C. State Bar living in North Carolina — asking each a simple question: Of the Tar Heel lawyers whose work you have observed firsthand, whom would you rate among the current best in these categories? Voters are not allowed to vote for themselves. They may select members of their firms only if they pick out-of-firm lawyers in the same categories, with the latter votes weighted more heavily. The top vote-getter in each category becomes a member of Business North Carolina’s Legal Elite Hall of Fame and is ineligible to win again.

Granted Admission to Tau Beta Pi for my work while a graduate student at San Jose State University

Tau Beta Pi - The Engineering Honor Society

1985

Admitted 1985 for my work while seeking masters degree in engineering in for Industrial and Systems Engineering at San Jose State University, San Jose, California.

Biomedical Engineering Society

Member

2017 - Current

North Carolina State Bar # 23395

Member

1996 - Current

Activities: Member of 15B Judicial District (Orange and Chatham Counties)

North Carolina State Bar Association # 22186

Member

1996 - Current

Activities: Member - Intellectual Property Law Section.

North Carolina Bar Association-Section on Intellectual Property Law

Member

1996 - Current

North Carolina Sustainable Energy Association

2013 - 2017

Council for Entrepreneurial Development

Co-Chair of Demo Room Selection Committee, Invited Speaker

1996 - 2011

Piedmont Entrepreneurial Network ("PEN")

President

1997 - 1999

North Carolina Professional Engineering Society (Charlotte Chapter)

Social Chairman

1986 - 1989

Samples of Issued Patents

United States Patent and Trademark Office

September 26, 2017

Provisional Patent Applications, The Good, The Bad, and The Ugly.

North Carolina Small Business Technology Develpment Center

April 26, 2017

Patent Searching for Entrepreneurs

Triange TechBreakfast Lecture Series

October 27, 2016

Protecting Your Competitive Advantages

Presentation at You Grow Girl Annual Business Summit

October 21, 2016

CREATE ACT -- New Legistlation Protects Joint Resarch Efforts, But With a Price

WRAL TechWire

February 2, 2005

What Happened to Free Speech? Changes Are Needed to Squelch SLAPP Suits

WRAL TechWire

January 4, 2005

Madey v. Duke University - The Scrap About Patents Heard Around the World

WRAL TechWire

November 9, 2004

PTO Reexamination Proceeding ... An Inexpensive Alternative to Patent Litigation

WRAL TechWire

October 27, 2004

US Patent and Trademark Office Celebrates a Pair of Milestones

WRAL TechWire

September 22, 2004

'Shop Rights' -- Another Trap That Inventors Must Be Aware of and Deal With Early

WRAL TechWire

July 22, 2004

Inventors Beware: Don't Make a Mistake and Leave Your Patent Rights at the Office

WRAL TechWire

July 21, 2004

Inventors Beware: Don't Be in a Rush To Hire an Invention Promotion Firm

WRAL TechWire

June 9, 2004

Design Patents for Computer Screen Icons - Another Tool to Protect Your Innovation

WRAL TechWire

April 21, 2004

Protecting Discoveries: House of Representatives Passes CREATE Act

WRAL TechWire

March 24, 2004

Design Patents ... Are You Overlooking This Tool to Protect Your Invention?

WRAL TechWire

January 30, 2004

Patent Fees: Misapproriation by Any Other Name Smells Just as Rotten

WRAL TechWire

November 12, 2003

Provisional Patent Applications,The Good, The Bad, and the Ugly, SBTDC Webinar, Webinar

April 27, 2017

SBTDC (North Carolina Small Business Technology Development Center)

Address the proper use of a provisional patent application and the problems when an inadequate disclosure is submitted.

Patent Issues for Triangle Angels Partners., Presentation to Monthly Meeting of Triangle Angel Partners, Research Triangle Park, North Carolina

January 10, 2017

Triangle Angel Partners

Overview of intellectual property tools and strategies.

Protecting Your Competitive Advantages., You Grow Girl Annual Business Summit, Charlotte, North Carolina

October 15, 2016

Discuss the concept of a competitive advantage and the various intellectual property tools for protecting the competitive advantages.

Teach entrepreneurs DIY skills with online tools for patent searching.

Patent Searching for Entrepreneurs, Triangle TechBreakfast Event at RTP Frontier, Research Triangle Park, North Carolina

March 16, 2016

Triangle TechBreakfast

Teach entrepreneurs DIY skills with online tools for patent searching.

Patent Primer for Non-Patent Attorneys, Law to the People - Continuing Education Webinar for Attorneys, Webinar

June 3, 2015

Law to the People

Three-hour continuing education course for attorneys to explain patent concepts.

Finding and Assessing Relevant Patents and Pending Applications, Launch the Venture Progam Series, Kenan-Flagler Business School- University of North Carolina at Chapel Hill

September 12, 2012

Kenan-Flagler Business School- University of North Carolina at Chapel Hill

Review what a patent is and how it can be used. Emphasize the difference between: Patentability--Ability to get a new patent and Freedom-to-Operate against existing patents and patent applications ahead of you in the pipeline. Work with finding patents and applications. Use PTO Public PAIR to get additional details on the patent application.

Finding and Assessing Relevant Patents and Pending Applications, SBTDC Webinar, Webinar

March 27, 2012

SBTDC (North Carolina Small Business Technology Development Center)

Patent process including the public tools to search for issued patents and published patent applications.

High Level View of the Patent Process., Presentation to Class of ECE 299, Pratt School of Engineeing, Duke University, Durham, North Carolina

March 26, 2012

Pratt Engineering School, Duke University

Teach engineers how the patent system can be used to protect innovations.

If you want them to hear you, speak their language., Lunch Presentation to Duke Law and Entrepreneurship Society, Duke Law School, Durham, North Carolina

March 22, 2012

Law and Entrepreneurship Society

Teach law students how to speak to entrepreneurs in an accessible way rather than making the lawyer-like noises that they learn in law school.

Protecting Your Competitive Edge, ProductCampRTP Weekend, Research Triangle Park, North Carolina

October 30, 2010

ProductCampRTP.org

An element of success in a new product is that the product is in higher demand than competing products or can be made less expensively than competing products (or both). Those elements form a competitive edge that your company can convert to increased margins or increased market share (or both). But a failure to protect these competitive edges may lead to their erosion as they are adopted by others. Learn to identify and protect competitive edges.

Protecting Your Competitive Edge, North Carolina Nanotechnology Commercialization Conference, Raleigh, North Carolina

March 25, 2009

NC Board of Science & Technology & SBTDC

Provide insights on why a company should seek patent protection and when they need to initiate contact with a patent attorney.

Protecting Your Competitve Edge, 2007 SBIR National Conference, Research Triangle Park, North Carolina

May 2, 2007

SBIR National Conference

The end goal of an SBIR/STTR project is a commercialized product that is profitable. Above average profits come from having a competitive advantage. To protect the competitive advantage and to be attractive to investors, the idea may need intellectual property protection. Come learn the big picture concepts you need know now and learn the how to avoid SBIR pitfalls that can hurt long-term viability. Session will also cover issues revolving around the ownership of your intellectual property.

Protecting Your Competitive Edge, CED Entrepreneurs Only Workshop: IP Protection, Research Triangle Park, North Carolina

May 1, 2007

CEDNC.org

Explanation of the concept of a competitive edge and how the patent process can protect a competitive edge. Include guidance on the timing for seeking patent protection before it is too late.

Information Disclosure Statement Filings, Masters Engineerng Management Course of Patent Process, Pratt School of Engineeing, Duke University, Durham, North Carolina

April 9, 2007

Pratt Engineering School, Duke University

Practical advice on the process of selecting material for information disclosure statements and the duties of disclosure under 37 CFR 1.56.

Patent LawTricks, Treats, and Scary Things, Conference hosted by Aurora Funds, Durham, North Carolina

November 3, 2005

Aurora Funds

Tricks, treats, and scary things with respect to the patent process and early stage companies.

Being Creative When Prosecuting Patents and Writing Agreements, American Intellectual Property Law Association Annual Meeting, Washington DC

October 27, 2005

American Intellectual Property Law Association (AIPLA)

A presentation and paper co-authored by Shannon Mrksich, Brinks Hofer Gilson Lione on the Create Act and the impact on joint research agreements with respect to the patent process.

Turning Your IP Into Dollars, Forum 2003- Emerging Intelligence, Chapel Hill, North Carolina

March 24, 2003

North Carolina Electronics Information Technology Association -

The ongoing cycle of identifying, protecting, using and commercializing intellectual property to increase corporate revenues. Kevin Flynn and Caroline Rockafellow will give practical advice on obtaining maximum value from intellectual property assets.

Intellectual Property Issues: Opportunities and Pitfalls, SBTDC SBIR Workshop, Research Triangle Park, North Carolina

May 22, 2002

SBTDC (North Carolina Small Business Technology Development Center)

Explanation of the intellectual property and regulatory framework that envelopes the SBIR grant recipient company. Goal is to provide practical advice and triggers for when it is time to get help from a patent attorney.

AV Preeminent™ Peer Review Rated

Results of Peer Reviews compiled by Martindale-Hubbell

Professional Engineer License (now expired)

North Carolina Board of Examiners for Engineers and Surveyors

Registration as Patent Attorney

United States Patent & Trademark Office

Q. Should I check the box claiming small entity status if claiming micro entity status on the patent application data sheet

16 February 2019

A: I checked the small entity box on one of the first micro entity submissions I made as part of being a micro entity is that you qualify as a small entity. That confused people at the USPTO. So if you are going to pay small entity fees, check small entity. If you are going to pay micro entity fees and submit the income forms for each applicant and for your company if the idea will be assigned, then do not check the small entity boxes. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn

Q. Can you patent an idea?

14 February 2019

A: I think you need to look at actual patents that have been issued for apps. The Supreme Court does not like mere efforts to organize human behavior with a marketplace or other app to modify human behavior. You need to show that what you did would impress an engineer that makes apps. http://bit.ly/Patent_Searching will get you started. You need to patent specific ways of making equipment do something of value. General concepts of what you may want to accomplish are generally not going to be sufficient. I hope that this helps. Kevin

Q. if i am making dress shirts for people with parkinsons and other challenges, are all shirts covered by this patent of ma

7 February 2019

A: Your question as passed on to lawyers was garbled. So I am guessing at what you asked. It is hard to believe that there is a non-expired patent that covers using a magnet to close portions of a shirt. The good news is that I am not aware of any synonyms to the word "magnet" or "magnetic" so patent searching should be fruitful. You may want to look at my patent searching tips in http://bit.ly/Patent_Searching. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Q. How can I get a patent history: who both it. I need to know who is the actual owner of the patent: US D740,361 S

7 February 2019

A: The patent history would be available from USPTO Public PAIR. This would be the activity during the application for the patent and any responses from the patent examiner for this design patent application. If all you want is the recorded assignment history, you can go to a separate database maintained by the USPTO https://assignment.uspto.gov/patent/index.html#/patent/search/resultAbstract?id=D740361&type=patNum If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn

Q. Is a patent possible in this circumstance

4 February 2019

A: Using your example with respect to a golf bag. If the sole difference was that you used off-the shelf sheets of flexible bamboo leather substitute and made a bag from that -- then you would have a hard time getting a utility patent. Substituting one product for another where the modifications to the process were fairly routine is not enough to get a patent. You might be able to get a patent for the ornamental appearance of the golf bag but that would be more like protecting a designer purse with a design patent to prevent knock-offs than a broad patent on the concept of using bamboo in golf bags. If when you go to use bamboo material, there is not something that will be sufficiently pliable, and durable in rain and sun -- and you find a way to modify bamboo to make the first bamboo material that would work in an application like making a golf bag, then you may be able to patent that process of modifying the bamboo to make it suitable for this use. If it turns out that people have used this sort of process a thousand years ago to make vases that contained flowers and water -- then you won't get the patent if the patent examiner learns of that earlier use of the same process. If you cannot use off-the-shelf bamboo material for your project but need to do some unusual steps then you need to consider whether you are doing a process well-known for modifying other thin wood sheets. You may want to do some searching using search tips -- http://bit.ly/Patent_Searching If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn

Q. Job search platforms - Patent information

4 February 2019

A: Josh, It may be helpful for you to do some initial searching so that you can understand what sort of patents are granted for software. See search tips at http://bit.ly/Patent_Searching. The US Supreme Court has issued several opinions in the last decade that really closed down the ability to get software patents for ways to organize people in an activity (like finding a particular job). You will likely need to have a focus on how a general purpose computer needed to be adapted in a special way to support something in your process. If your process can be implemented with standard computer tools, and the novelty is just that you are serving a particular workforce, it will be hard to get a patent in that space. Unfortunately, there may be some patents issued more than 10 years ago that still have some years left on them that do cover ways of organizing human activity. These patent owners may send you demands for royalties even though their patents may well be invalid under the current rules. You should get some help from a competent patent attorney. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn

Q. hello I am wondering if I have a patentable process I am using a similar process to patent #9726971 but using a uv ink

1 February 2019

A: The question is whether those of skill in the art looking at Pat. No. 9,726,971 and everything previously known in all public writings in all languages from the beginning of time would consider your modification of the process in 9726971 to be a non-obvious modification. Notice that the pool of information is not just patents but trade magazines, textbooks, product specs for the UV inks, etc. If people of skill in the art know that you can substitute a UV ink and it will have the favorable properties that you want, then it is unlikely that you will be able to convince an examiner that this was an invention rather than just good engineering. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn

Q. I have many ideas but I don’t know the process of getting a prototype or a product

29 January 2019

A: Mr. Thomas, This is hard. I know some firms that help flesh out ideas and make prototypes. The engineers often become co-inventors but they will assign the patent rights over to the client that is paying them. Good folks normally have a range of things that they do and they are not the answer for every possible inventor. So I do not know enough to make a suggestion. Some firms specialize in medical devices. Some firms work with control systems. Some work with consumer goods. Sometimes you need someone with a lot of experience with plastic injection molding. Sometimes you can get a prototype with a 3D printer. A good source for getting connected to service providers that are known to work well with clients is to contact your local office of the North Carolina Small Business Development Center http://www.sbtdc.org/ . Your business attorney may know reputable patent attorneys and patent attorneys often know folks in the prototype space. You need to be careful as there are firms out there that will take advantage of an optimistic newbie. If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338 Kevin E Flynn

Q. my name is spelled with a typo in a patent. How do I fix that?

24 January 2019

A: Rajesh, This is surprisingly difficult to fix as you signed the original oath on July 7, 2003 as Rajesh Vaidheswarra. Most likely this was the spelling used throughout the process. Ideally, you would have corrected this problem in July of 2003. Now the USPTO believes there is an inventor with that name and it will take some steps to change this. The assignee of the patent will need to handle this and they may need signatures from the other co-inventors. The fix may get made at both the USPTO PAIR record and the USPTO assignment record but won't change the face of the printed patent. They can seek a Certificate of Correction which goes to the end of the printed patent to fix typos. This it probably not what you wanted to hear but it is important that you read carefully any document before you sign it. Kevin E Flynn