Matt Martin counsels clients on intellectual property (IP) issues with a focus on strategic patent procurement and IP portfolio management, particularly in the manufacturing and consumer products industries. He has experience in a range of technical areas, especially as relates to consumer goods and fabrication. In particular, Matt has handled IP matters relating to mechanical and electro-mechanical plumbing fixtures, housewares, medical devices, food products, financial products, optics and lighting, coating compositions, micro fabrication, radiation detection, computer memory, and semiconductors.

Patent Procurement

Matt counsels clients on strategic patent procurement, both domestic and foreign, with a focus on matching a patent strategy to the client’s business goals. His experience in patent procurement includes:

• Utility patents
• Design patents
• Patentability analysis
• Post-grant proceedings, including reexamination and reissue
• Foreign patent applications, including PCT, Utility, Design, and Utility Model

Portfolio Management

Matt also advises clients on general IP issues, including in-bound and out-bound management of patent portfolios. His experience in portfolio management includes:

• Design-around product development analysis
• IP due diligence in corporate transactions, including mergers, IPOs, and acquisitions
• IP-related agreements, including joint venture, supply, licensing, and consultant agreements
• Patent rights under Bayh-Dole
• In-bound and out-bound licensing

Patent Risk Management

In addition, patent risk management is also a significant portion of Matt’s work. He works with clients to manage risks posed by third-party patent rights, including through the use of freedom-to-operate analysis, third-party preissuance submissions, post-grant proceedings, opinions, and licensing.

Transactional Matters

Matt has also worked on numerous transactional projects for clients, ranging from initial public offerings to acquisitions of privately held companies. A representative sample of Matt’s work includes:

• IP due diligence for the acquisition of a privately held consumer goods company
• Serving as the lead for all IP due diligence for an initial public offering for a technology company in the medical device area
• Managing the acquisition of a privately held farm equipment and manufacturing company
• Managing the acquisition of a privately held food processing company
• IP due diligence for a joint venture for a medical device company
• IP due diligence for the purchase of several privately held software companies by a large medical insurance company
• Evaluation of an clean-tech startup for acquisition by a privately held manufacturing company
• Assisting an investment bank with Illinois utility regulations regarding the restructuring of certain “clean” power generation assets

Matt is the vice chair of the Mechanical & Electromechanical Technologies Practice Group and a member of the IP Litigation Practice Group and Energy Sector.