Alex Katsulis
Associate
Norton Rose Fulbright US LLP
Related services and key industries
Biography
A mid-level associate and USPTO-registered patent attorney, Alex Katsulis advises on IP procurement and portfolio management by helping companies and individuals secure protection for their inventions, capitalize on the value of their patents, and manage risk posed by patents owned by others. Specifically, Alex focuses his practice primarily on patent preparation and prosecution, opinion work, IP due diligence for portfolio acquisitions, and landscape studies, and also provides technical support for litigation and post grant proceedings.
Alex counsels clients ranging from start-ups to large multinational corporations on foreign and domestic patent-related matters involving a variety of technologies, including mechanical and electrical arts, computer, and software. Though Alex focuses his practice primarily in the mechanical and software space, he has experience with an array of technologies such as medical devices, digital healthcare systems, machine learning/AI, autonomous vehicles, image processing, microelectronic devices, semiconductors, materials, mobile device technology and manufacturing processes. He has extensive experience drafting and prosecuting domestic and international patent applications involving these technologies. Alex also has experience prosecuting reissue patent applications.
Alex's opinion work experience includes drafting patentability, validity and strength, infringement and freedom-to-operate opinions over a wide array of technologies, with a particular focus on new product development and target company acquisitions. This includes both technical and legal IP portfolio investigation and analysis, with a specific focus on business impact and risk mitigation. He also works on due diligence research and analysis related to IP portfolio acquisitions, such as acquisitions that are a part of a corporate merger or acquisition. Additionally, Alex conducts landscape studies to identify strategic acquisition opportunities and analyzes patent portfolios to discern potentially valuable IP for litigation opportunities. He also has experience preparing inter partes review petitions and drafting motions for pending litigation.
Professional experience
Collapse all- JD, Boston University School of Law, 2018
- Journal of Science and Technology Law, Article Editor
- BS, with honors, Materials Science and Engineering, concentration in electronic materials, University of Illinois at Urbana-Champaign, 2014
- James Scholar
- Illinois State Bar
- US Patent and Trademark Attorney
- US Patent and Trademark Agent
Alex has led counseling of the US patent portfolio for a global medical device manufacturing corporation from initial invention disclosure to patent grant for a portfolio near 100 pending patent applications and granted patents.
Representative patents and published applications:
- Chicago Bar Association
Insights
Clarifying AI and inventorship: USPTO's guidance for AI-assisted inventions
Blog | May 14, 2024