PRACTICE SUMMARY

Mr. Agnew is a Partner at Klintworth and Rozenblat IP. Mr. Agnew has over twenty years of experience in the intellectual property field.

In recent years, Mr. Agnew’s intellectual property practice has primarily focused on international prosecution and portfolio management of patent applications in the high-tech areas of electrical engineering and software. Mr. Agnew provides strategic counseling on claim drafting and scope of protection, touching on all areas of patent prosecution.

Mr. Agnew has filed and/or prosecuted hundreds of patent applications in a broad range of technologies, including electrical, electronics, computing, hardware, software, physics, optics, video streaming, medical devices, mechanical, internet applications, financial and mathematical algorithms, and business methods.

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Regarding private law firm experience, prior to joining Klintworth and Rozenblat IP, Mr. Agnew was a Partner with the law firm Invention Mine LLC. in Chicago, Illinois, providing strategic advice to clients, preparing and prosecuting patent applications, and mentoring and supervising patent professionals on patent preparation and prosecution.  Mr. Agnew was a Partner at Choate Hall & Stewart in Boston where he led the electrical engineering and software patent prosecution practice group, representing numerous pre-IPO and start up clients for the corporate practice in IP issues including patent prosecution and IP counseling (including due diligence, freedom to operate, patent opinion, and clearance advice) and litigation support (including management of a team in cooperation with joint defendants on invalidity contentions and arguments).   Mr. Agnew was an Associate Attorney at the national IP boutique Fish & Richardson P.C. in Boston, where he worked on both patent prosecution and patent litigation matters, including successful representation of clients in patent litigation in U.S. district court and in appellate work before the Court of Appeals for the Federal Circuit. Before law school, Mr. Agnew worked for years as a Registered Patent Agent before the U.S. Patent and Trademark Office handling complex patent prosecution at the general practice firm Pillsbury Winthrop in Palo Alto, California and at the Chicago, Illinois IP boutiques Brinks Hofer Gilson & Lione and McDonnell Boehnen Hulbert & Berghoff.

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Mr. Agnew has significant in-house experience as well.  Mr. Agnew was U.S. based Global Head of Intellectual Property for a Hong Kong-based investment holdings company with 20,000 workers worldwide.  Prior to that, Mr. Agnew spent four years in Northern California as Chief IP and Patent Counsel (and Registered In-House Counsel) for a private venture-backed software company with 4,000 employees and then approaching $1 billion in revenue with R&D centers and operations worldwide.  Mr. Agnew oversaw and was responsible for all aspects of worldwide IP for the company.  Prior to that, Mr. Agnew also served as Vice President and Assistant General Counsel for a financial services company, preparing and prosecuting patent applications and interviewing cases with the U.S. Patent and Trademark Office.

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