Kean DeCarlo is a leader in the mechanical, software, database solution, and medical technology sectors and actively advises clients on all aspects of patent, trademark, trade dress, licensing, unfair competition, copyright, trade secret, and Internet matters. Kean strives to develop an in-depth business partner relationship with his clients – by understanding the intimate details of a client’s business, he is able to maximize the return to the business on their intellectual property investments.

With over two decades of experience, Kean has extensive experience in domestic and international patent prosecution, patent counseling, portfolio and competitor risk analysis, licensing, and commercial transactional matters for clients ranging from start-up companies to international conglomerates. He provides strategic due diligence guidance to companies, universities, and investors during mergers and acquisitions or portfolio restructuring, with a particular emphasis on early stage growth companies and entrepreneurs in commercializing their IP assets. As part of Kean’s business partner focus, he routinely serves on clients’ patent and marketing committees, where he provides strategic intellectual property guidance.

Additionally, Kean worked as a domestic and international commercial pilot for Delta Air Lines and as a fighter pilot in the United States Air Force. He is a veteran having served in Operation Desert Storm.

Kean is an adjunct professor of Intellectual Property Law and IP Transactional and Licensing Law at both Georgia State University College of Law and Mercer University College of Law. He is a member of the State Bar of Georgia and its Technology Law Section Executive Committee, the Copyright Society of the U.S., the American Intellectual Property Law Association, and the Southeast Medical Device Association.

Publications

  • Preview of the United States Supreme Court Cases, ABA Preview (on the question of whether the Federal Circuit’s adoption of a Partial-Final-Written-Opinion regime is consistent with the statutory text and intent of U.S.C. Sections 314 and 318), November 17, 2017
  • Preview of the United States Supreme Court Cases, ABA Preview (Samsung v. Apple on where a design patent is applied to only a component of the product, whether an award of infringer’s profits should be limited to only profits that can be attributable to the component), September 28, 2016
  • Post DTSA, How Should Companies Protect Their IP? Inside Counsel, August 5, 2016
  • New USPTO Rules for Post-Grant Trials, IP Strategist, June 3, 2016
  • Critical Information Risks in Hiring? Inside Counsel, May 11, 2016
  • Is the Risk of Critical Information Loss Keeping You Up at Night? Inside Counsel, May 10, 2016
  • What Standard Should the Patent Trial and Appeal Board Apply in Interpreting Patent Claims During Inter Partes Review? Is the Institution of Inter Partes Review Ever Appealable? ABA Supreme Court Preview, April 25, 2016 

Professional Activities

  • State Bar of Georgia, Technology Law Section, Executive Committee
  • American Intellectual Property Law Association (AIPLA)
  • Copyright Society of the U.S.A.
  • Georgia State University College of Law and Mercer University School of Law, Adjunct Professor, Intellectual Property Law and Intellectual Property Transactional and Licensing Law
  • Southeast Medical Device Association

Honors and Awards

Intellectual Asset Management (IAM) magazine’s “IAM Patent 1000” – the World’s Leading Patent Practitioners

Experience

Any result the lawyer or law firm may have achieved on behalf of clients in other matters does not necessarily indicate similar results can be obtained for other clients.

  • Preparing and prosecuting hundreds of patents in a diverse range of technologies, including complex mechanical & electro-mechanical systems and machinery, such as drilling equipment, firearms, packaging equipment, poultry processing equipment, textile sewing and finishing equipment, aircraft components and tracking systems, carpet tufting machines, carpet and hardwood flooring compositions.
  • Representing multiple universities in domestic and international patent prosecution and portfolio management, as well as their associated licensing, and commercial transactional matters.
  • Led the patent preparation and prosecution, due diligence investment analysis, and intellectual property merger analysis that cumulated in an over $500 million acquisition for a medical technology client.
  • Served as patent counsel for nearly two decades to the United States’ largest commercial and residential flooring carpet and hardwood manufacturer.
  • Formed the first focused medical technology patent group in the Southeast in 1999 and continues to actively represent multiple medical technology companies.
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Bar admissions

1997, Georgia

Admitted to practice before:

  • US Patent and Trademark Office

Education

  • J.D., 1997, Georgia State University College of Law
    • magna cum laude
  • M.B.A., 1990, Golden Gate University
    • with honors
  • B.S., 1982, Clemson University: Mechanical Engineering
    • magna cum laude
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