Additionally, Renato counsels clients in dispute resolution. For clients in litigation, he leads settlement discussions and drafts and negotiates settlement agreements. In proactive planning, he performs freedom-to-operate analysis to assess the potential for infringement of intellectual property. Renato also develops defensive strategies for clients charged with patent infringement, including invalidity positions and design-around approaches.
Renato has drafted and prosecuted hundreds of patent applications for inventions in the software, electrical, and mechanical industries that include medical devices, surgical systems, telecommunication devices, antennas, software, mobile apps, electronic gaming devices and systems, vehicles, power equipment and machinery, computers, consumer appliances, database structures, e-commerce systems, and business methods.
- Drafted, negotiated, and closed a $10 million asset-purchase agreement representing a Fortune 500 company in its acquisition of a solar-power generation site.
- Led post-suit settlement discussions and drafted and negotiated settlement agreements for clients charged with breach-of-license agreements and intellectual property infringement.
- Managed international patent portfolios of Fortune 500 companies for an array of product lines, including medical devices, consumer appliances, air purifiers, gaming devices, and tractors.
- Executed design-around strategies for companies charged with patent infringement.
- Built invalidity defenses for companies charged with patent infringement.
- Drafted and negotiated multi-million product-development and patent-license agreements representing pharmaceutical manufacturers.
- Drafted and negotiated a worldwide brand-development agreement for a Fortune 500 consumer-product manufacturer.
- Performed an onsite intellectual-property audit of a food manufacturer and prepared IP procedures and policies for the manufacturer.
- Conducted IP due diligence for numerous mergers and acquisitions.
- Performed in-person contract negotiations in Asia related to the development, manufacture, and licensing of electronic products.
- Co-founded a start-up venture that patented an electronic product, manufactured the product overseas, and successfully brought the product to the marketplace with worldwide sales.
- University of Illinois College of Law, J.D., 1997
- University of Illinois, B.S., 1994
- Illinois, 1997
- U.S. Patent and Trademark Office, 1999
- New York, 2014
- New York State Bar Association
- Onondaga County Bar Association, Diversity and Inclusion Committee
- American Intellectual Property Law Association
- Biomedical Engineering Society
- Licensing Executives Society, Western New York Chapter, Program Leader
- New York State Science & Technology Law Center at Syracuse University, Advisory Board Member
- Strategic Health Information Exchange Collaborative, “Protecting IP and Avoiding Disputes” Webinar
- Licensing Executives Society, “Strategies for Intellectual Property License Agreements – Thorny Issues, Case Law, and Drafting Techniques” CLE
- Biomedical Engineering Society, “Tech Transfer and Licensing: Best Practices in Transferring Technologies From Academia and the Clinic Into Industry,” Moderator
- StartFast Venture Accelerator, “Open Source Legal Considerations for Proprietary Software Development”
- Chicago Bar Association, "Buying and Selling a Business: Intellectual Property Considerations"
- Law360, “New Strategies for Licensing of Multicomponent Inventions”
- FisherBroyles, LLP, Partner
- Originatic LLC, General Counsel and Co-Founder
- K&L Gates LLP, Partner
- Holleb & Coff, Associate