Courtney J. Miller

Columbus
T 614.559.7288
F 614.464.1737
10 West Broad Street
One Columbus Center, Suite 2300
Columbus, Ohio 43215-3484

Courtney practices in the firm’s Intellectual Property Practice Group. He is a registered patent attorney with nearly 20 years of experience in U.S. and foreign patent procurement, patent portfolio management, patent opinions, technology transactions, and technology development and commercialization. Courtney has drafted, filed, and successfully prosecuted hundreds of patent applications in the various technical arts, and he has experience in biotechnology, molecular biology, medical devices, drug delivery systems, welding and joining technologies, and consumer products.

Courtney has worked extensively with companies of all sizes, as well as research-oriented hospitals and universities, and he has effectively handled numerous negotiations and transactions related to the licensing and commercialization of new products and technologies. Courtney also provides clients with legal opinions, including freedom-to-operate, non-infringement, invalidity, and patentability opinions, and he engages in patent litigation. He also frequently works with clients to obtain USFDA approval for medical devices through the 510(k)-premarket notification process.

Before practicing law, Courtney spent ten years as a research scientist in the biotechnology and medical products groups at Battelle Memorial Institute in Columbus, Ohio where he was directly involved in numerous complex research programs sponsored by industrial, commercial, and governmental clients.

Courtney is a frequent author, presenter, and speaker on various legal topics, and has been an executive mentor for the Technology, Entrepreneurship, and Commercialization course offered by The Fisher College of Business at The Ohio State University.

Representative Matters

Specific Technologies:

Biomedical; biotechnology; molecular biology; chemical; pharmaceutical; materials; manufacturing processes; and mechanical arts including medical, surgical and drug delivery devices, welding and joining technologies, and commercial vehicle systems; consumer products.

Specialties:

U.S. and Foreign Patent Prosecution; Legal Opinions (Freedom to Operate, Noninfringement; Invalidity; Patentability); Technology Agreements; Product Design, Development and Commercialization; USFDA Regulatory Approval for Medical Devices.

Portfolio Management:

  • Direct management of large patent portfolios for corporate clients.
  • Periodic audits of client patent portfolios to determine value.
  • Direction of and participation in periodic portfolio review committees.
  • Direct interface with research and development and marketing to create high-value portfolios.
  • Due diligence for new product development and commercialization.
  • Extensive training of client employees regarding various intellectual property issues.
  • Creating client-specific intellectual property capture, protection, and commercialization strategies.

Patent Prosecution:

  • Preparing and prosecuting U.S. patent applications (utility and design).
  • Preparing and prosecuting international (PCT) patent applications.
  • Managing foreign associates and foreign patent prosecution.
  • Technical Expertise: medical and surgical devices; molecular biology, immunology, and biotechnology; chemical compositions and processes; nanotechnology; polymers; drug delivery systems and devices; mechanical systems and devices; materials; consumer and household products; sporting goods; computer software and business methods.

Opinions and Litigation:

  • Searching patent and non-patent prior art; drafting patentability opinions.
  • Preparing noninfringement, invalidity, and freedom-to-operate opinions.
  • Providing general technical and legal support for patent litigation.
  • Second chair litigator in patent infringement actions.

Agreements:

  • Negotiating and drafting technology-oriented transactional agreements.
  • Agreements: patent and trademark license agreements; technology transfer agreements; sponsored research agreements; manufacturing and distribution agreements; joint venture agreements; confidentiality and non-disclosure agreements; non-compete agreements.

Memberships & Affiliations

  • Columbus Bar Association
  • Ohio State Bar Association
  • American Intellectual Property Law Association (AIPLA)
  • Columbus Intellectual Property Law Association (CIPLA), past secretary, vice president, and president
  • Friends of the Lower Olentangy Watershed
  • Team Battelle/Battelle Rivers and Streams Beautification Project
  • Appointed Special Counsel to the Ohio Attorney General for patent and trademark matters

Non-FBT Publications and Events

From Concept to Patent Number, January 6, 2016

Safeguarding Trade Secrets: What You Need To Know, November 16, 2015

Presenter, BioOhio Expo & Showcase, July 27, 2016

Presenter, Enforcement of Trade Secrets - What You Need to Know, October 7, 2015

Presenter, Business Briefing: Trade Secrets & Non-Compete Agreements: What Is Enforceable in Ohio?, September 11, 2014

Presenter, Business Breakfast Briefing (Columbus, Ohio), February 12, 2014

Other Contact Info

Assistant

Julie LaPerle
Email
T 614.559.7295
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