“I love the challenge of preparing a difficult patent … and then going the extra mile to identify and extract the patent’s optimum business value.”
120 South LaSalle Street|
Chicago, IL 60603VCard
For over 40 years, businesses of various sizes and stages, independent inventors and others have turned to Steven G. Parmelee for high-quality, client-focused patent services. Steve has personally written well over 1,800 patent applications, handling ordinary prosecution as well as administrative and judicial appellate work, post-grant reexamination work, and other sophisticated patent needs. Clients, both U.S. and foreign, often seek Steve’s counsel to manage their patent portfolios, whether comprising existing inventions or new prospective ventures.
Steve has also litigated various cases for both bench and jury trials. He has handled appellate work before the Court of Appeals for the Federal Circuit, as well as considerable enforcement and defensive work. Steve’s litigation and licensing experience greatly informs the drafting and prosecution of his patent applications.
An electrical engineer by training, Steven is especially well-versed in the following areas:
Steve is effective at helping clients identify and realize the value in their patent assets. He has led numerous white-space inventing efforts for various clients and is a founding member of the International Association of Innovation Professionals. Steve's experience with structured innovation resulted in dozens of strategically placed patents with many tens of millions of dollars in licensing value.
Several other strengths set Steve apart to his clients’ advantage. Because he served in an in-house position for 17 years, he better understands his clients’ challenges, what it takes to make their job easier, and the importance of communicating clearly with both clients and patent examiners. His overseas assignment—managing Motorola’s IP activities in Southeast Asia—offers an edge when dealing with non-U.S. patent systems. Steve has also conducted hundreds of interviews with U.S. Patent Examiners, an experience that has given him a solid understanding of the internal challenges and issues faced by examiners.
Successfully combined various patent prosecution practices (including reissue, continuation, and in-person examiner interviewing practice) to issue a key patent during the course of litigation involving this patent family.
Successfully prosecuted to issuance dozens of troubled patent applications transferred in from numerous clients. This includes applications with exceptionally long, unfruitful-to-date prosecution histories due to such things as complicated prior art issues, changing legal standards, substandard technical descriptions, and/or strained relations with the patent examiner.
A major wireless telephony system relied on Steve to lead its comprehensive development of a patent portfolio. Unlike others in the industry, this portfolio successfully resisted all efforts by competitors to market unlicensed compatible offerings and generated tens of millions of dollars in licensing revenue.
Served in several in-house capacities for Motorola, Inc.: