Ranked in 1 Practice Areas
3

Band 3

Intellectual Property

Ohio

3 Years Ranked

About

Provided by Carlos Garritano

USA

Practice Areas

• Intellectual Property

• IP Portfolio Evaluation and Management

• IP Business Strategy & Agreements

• Patent Litigation

• Patent Procurement

• Patent Prosecution

• Autonomous Vehicles & Artificial Intelligence Technologies

• Trademarks

• IPR

• PGR

• Opinions

• General IP Strategy

• Licenses

• Copyright Law

• Business Acquisitions

• Business Mergers

• Technology Transfer

• Trade Secret Litigation

• Health & Life Sciences

• Alcoholic Beverages

Career

Carlos Garritano, chair of the Tucker Ellis Intellectual Property Department, practices in the area of intellectual property consultation and strategy. He works closely with clients to create “big picture” plans that provide multiple layers of coverage and protection for their intellectual property (IP) needs, including patents, copyrights, trademarks, contracts, and/or trade secrets. Carlos works with clients ranging in size from Fortune 500 companies to start-up companies to create custom-tailored IP protection plans based on each client’s unique needs and business goals. He has extensive experience in the areas of patent litigation, portfolio development, licensing, patent/trademark preparation and prosecution, business mergers, and acquisitions involving IP.

Having earned a Bachelor of Science in Electrical Engineering, Carlos is particularly suited to the field of patent preparation and prosecution, which includes evaluating and securing applicable protection for clients, drafting and filing patent applications (utility and design), prosecuting utility and design patent applications, and generating complex drawings for patent applications. He has drafted and prosecuted more than 850 patent applications in advanced technical areas, including computer software, electrical circuitry, portable device applications, data communications, wireless technologies, welding systems, video game technology, radio frequency identification, semiconductors, data search, wireless security, databases, computer hardware, operating system technologies, locomotive systems, battery technology, mechanical devices, electrical devices, and Internet of Things (IoT). Carlos is exceptionally experienced in industrial design protection and often couples design patent with utility patent protection strategies to provide additional barriers to prevent would-be infringers from copying products, devices, or components.

IP landscapes can be overbearing, but Carlos diligently identifies the landscape of client-defined technological areas of interest to assess existing IP or where IP does not exist. These IP landscapes are evaluated with organized and well-planned strategies that involve searches, opinions, and client-specific plans for protection aligned with the client's goods or services.

Carlos further is experienced with Post Grant Proceedings (PGP) which allow the validity of issued patents to be challenged. Carlos has extensive experience in advising clients about options with patent litigation which include Inter Partes Review (IPR) and Post Grant Review (PGR). Specifically, Carlos has unique hands-on experience in PGP's by preparing and filing multiple IPR Petitions that are used to advocate for our clients’ interests.

In addition to continuously perfecting his specialized skill in the IP field, Carlos has gained invaluable corporate world experience through his work on deals and contracts/agreements. He uses his knowledge of patent, trademark, copyright, and trade secret preparation and procurement as a strong foundation to advise clients on commercial and business dealings. Carlos’s unique balance of business acumen and IP expertise enables him to seamlessly navigate legal issues in all areas of law. His counsel often sheds light onto how IP may be involved in other types of matters and how rights of such intellectual property may affect the parties. Depending on the scope of the corporate project, Carlos provides legal insight through an IP lens. Carlos has worked on agreements related to supply, services, manufacturing, employment, licensing (both inbound and outbound), consulting, franchise, confidentiality, and purchase, among others.

Professional Memberships

• Intellectual Property Owners Association: Diversity & Inclusion Committee; Patent Licensing Committee

• Cleveland Intellectual Property Law Association

• American Intellectual Property Law Association

• Cleveland Metropolitan Bar Association

• American Bar Association

Industry Sector Expertise

• Intellectual Property

• Patent Preparation

• Patent Prosecution

• Post Grant Proceedings

• IPR

• PGR

• Patents

• Opinions

• Portfolio Evaluation

• General IP Strategy

• Patent Litigation

• Licenses

• Trademarks

• Trade Secrets

• Business Mergers

• Business Acquisitions

• Copyrights

Education

The Ohio State University Moritz College of Law

J.D.

2001 - 2004

Case Western Reserve University

B.S.E.E., cum laude

1997 - 2001

Awards

The Best Lawyers in America

2023

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