Nicholas T. Peters
I’ve found patent applications tend to move forward more efficiently when attorneys look at them from the examiner’s perspective, keeping in mind there’s a real person behind the process.

Nicholas T. PetersPartner

Chicago
120 South LaSalle Street
Suite 1600
Chicago, IL 60603VCard
312.577.7000 
312.577.7007 fax
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Education

J.D., Loyola University Chicago School of Law, 2003, cum laudeM.S., Physics, Vanderbilt University, 2000
B.S., Mathematics and Engineering Science, Vanderbilt University, 1998, magna cum laude

Services

Technical Areas

Bar & Court Admissions

IllinoisU.S. Patent and Trademark OfficeU.S. District Court for the Northern District of Illinois

Recognition

Selected for inclusion in Illinois Super Lawyers – Rising Stars, 2008 through 2014, recognizing the state's top up-and-coming lawyers
Loyola University Chicago School of Law
- Loyola Intellectual Property Fellow
- Chicago Intellectual Property Colloquium Fellow

Clients turn to Nicholas T. Peters for sophisticated patent portfolio management and the prosecution of complex patents. He helps clients manage patent assets with strategies tailored to their needs, including when and where to file patent applications, how to write them, and how to usher them through the patent offices.

In addition, Nick has extensive experience in “atypical” practices at the U.S. Patent and Trademark Office (USPTO), including reissues, reexaminations, and oral argument before the appeal board.

Nick’s clients range from individual inventors and small technology-based companies to large multinational corporations, who benefit from his background in physics, electrical engineering, and mechanical engineering. Their industries include secure access devices, wireless communication, magnetic storage media erasure, medical and imaging devices, microchip technology, mechanical water systems elements, software, and various e-commerce or Internet-based businesses.

Nick credits his previous litigation experience in helping his clients manage risk and stay on the right side of IP claims. As a result of his perspective, Nick can guide his clients to make more-informed decisions regarding any patent risk and how to mitigate that risk. This includes attacking third-party patents through various means, such as at the USPTO, where Nick regularly meets with examiners, creating relationships that can help move challenging cases through the USPTO.

Before attending law school, Nick worked with the Living State Physics Research Group at Vanderbilt University. There he helped design and run a type of electromagnetic field detector called a Superconducting Quantum Interference Device (SQuID). This work was published in Science magazine and in Review of Scientific Instruments and mentioned in major news sources. It also led to Nick being named a co-inventor on U.S. Patent Number 7,002,341.



Manages extensive global patent portfolio and application strategy for worldwide leader in barrier operator technology.

Prepares patent applications for leading electronics company with focus on complex signal-processing technology.

Conducts complex patent office procedures including reissue, reexamination, and post-issuance practices.

  • For example, advised client and handled inter partes reexamination request and corresponding U.S. Patent and Trademark Office proceeding, resulting in rejection of all claims of patent. Represented the client on appeal by the opposing party, and the Patent Trial and Appeal Board affirmed the rejection of all claims.

Creates valuable patent assets for a variety of software startup companies.

Creates value for university-based research through development of intellectual property.

Manages U.S. patent prosecution for internationally based innovations by medical company focused on electrosurgery, vessel sealing, argon plasma coagulation, waterjet surgery, and cryosurgery.

Manages worldwide patent activity for leader in paint color display company.

Prepares and manages intellectual property for new communication bus technology.

Conducts U.S. patent prosecution together with various worldwide patent professionals for non-U.S.-based clientele.

  • “The Leahy-Smith America Invents Act: A First Look,” Fitch, Even, Tabin & Flannery Webinar, October 4, 2011.
  • “Matching Patent Prosecution to Your Business Goals,” Fitch, Even, Tabin & Flannery Webinar, September 21, 2011.
  • Guest Lecturer on Intellectual Property, New Venture Formation course, University of Illinois at Chicago, October 7, 2010.
  • American Bar Association, Section of Intellectual Property Law
    • Patent System Policy Planning Committee
    • Patent and Trademark Office Affairs – Post-Grant & Inter Partes Patent Practice Committee
    • Patent Trademark Office Affairs – Patent Ex Parte Practice Committee
    • Software and Cloud Computing Committee
  • American Intellectual Property Law Association
  • Chicago Intellectual Property Alliance 

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