Catherine J. ToppinPartner

Catherine J. Toppin is a registered patent attorney with a unique mix of private practice and in-house intellectual property law experience. She currently provides clients with a variety of IP counseling services that include patent preparation and prosecution, global IP portfolio management, trademark prosecution, and transactional matters. With her background in electrical engineering, Catherine’s technical expertise spans a range of industries including computer hardware and software, cybersecurity, medical devices and imaging, consumer electronics, and telecommunications, among others.

Catherine began her IP career as a patent examiner with the USPTO, which inspired her to attend law school to become a patent lawyer. After earning her J.D., she joined a large Boston-based firm where she spent several years developing a diverse IP practice that encompassed patent procurement, trademark prosecution, IP portfolio development, IP due diligence, opinion work, and litigation support.

She then transitioned to working in-house with General Electric’s corporate legal department, where she held positions of increasing responsibility over seven years, most recently serving as the worldwide team leader for an imaging and life science technology business division in her role within the GE Global Patent Operation. During her tenure with GE, Catherine developed IP strategy and managed portfolio and global patent prosecution for multiple business groups. She also provided transactional support for GE Ventures Licensing. This multilayered experience, including her role in managing outside counsel and developing IP budgets, provides Catherine with a deep understanding of her clients’ IP challenges and collaboration and communication needs.

Prior to joining Fitch Even, Catherine returned to private practice at an IP law boutique, where she advised clients including venture capital firms and tech startups on comprehensive global IP strategy, drafted and prosecuted patents and trademarks, developed and managed patent portfolios, and provided transactional counsel to businesses.

In addition to her IP practice, Catherine has long been passionate about empowering and enriching underserved communities and has volunteered as a board member for a number of civic and public service nonprofits.  

Provides comprehensive strategic global IP counseling, including on utility and design patents, trade secrets, and trademarks, to provide clients with options for optimum monetization of IP assets in line with their business objectives.

Drafts and negotiates numerous license, joint development, commercial, and other business agreements on behalf of Fortune 10, venture capital, and small business clients.

Developed patent portfolio for medical imaging technology utilizing big data and machine- learning software systems.

Counseled a startup venture within a large matrixed organization on patent portfolio strategy related to industrial automation software solutions.

Conducted numerous inventor brainstorming sessions for both in-use and future-use technologies leading to white-space and competitor-blocking patent and trade secret portfolio.

Performed numerous clearance and freedom-to-operate analyses to mitigate client risk.

Provided litigation support (e.g., drafted Markman briefs, prepped expert witnesses, performed claim analysis) resulting in multimillion-dollar settlement on behalf of client.

Presentations

• “You Represent a Global Corporation with Connected Innovation Centers Around the World: Have You Reviewed the Company’s Invention Disclosure Process Lately?” American Intellectual Property Law Association Spring Meeting, Philadelphia, May 16, 2019.
• “Strategic & Transactional—Building a Strong Patent Portfolio: Views from In-House,” Patent Law Institute 2019: Critical Issues & Best Practices, New York, April 4, 2019.
• “Counsel to Counsel,” Dilworth IP webinar, June 28, 2018.
• “Portfolio Management and Patent Prosecution: Going Beyond Quality,” The IP Strategy Summit, Boston, May 15, 2018.
• “Strategic & Transactional—Building a Strong Patent Portfolio: Views from In-House,” Patent Law Institute 2018: Critical Issues & Best Practices, New York, April 6, 2018, and San Francisco, April 27, 2018.

Publications

• “Processes and Practical Tips for Creating Robust Patent Portfolios.” Paper presented at the American Intellectual Property Law Association Spring Meeting, May 2019.

• Boston Intellectual Property American Inn of Court
  • Cofounder and Member, 2009–11
• National Bar Association
  • Intellectual Property Section
    • Chair, 2010–12
• New England Blacks in Philanthropy
  • Secretary, Board of Directors, 2017–20
• New Westchester Symphony Orchestra
  • Member, Board of Directors, 2016–18
  • Principal Second Violinist
• Princeton University
  • Association of Black Princeton Alumni
    • Member and Past President, Board of Directors, 2003–present
  • Princeton University Alumni Association
    • Alumni Council Executive Committee Member, 2008–14
  • School of Engineering and Applied Science
    • Member, Leadership Advisory Council, 2012–present 
• Project S.T.E.P.
  • Member, Board of Directors, 2009–18  
• Urban League of Southern CT
  • Member, Board of Directors, 2015–18

• July 31, 2020

  Fitch Even Welcomes Partner Catherine Toppin to Chicago Office