PROFESSIONALS

Kendall K. Gurule

image-Kendall K. Gurule

Kendall Gurule counsels clients in a number of the chemical, materials science, pharmaceutical, and biomedical fields. Her practice spans the patent and trademark life cycle, from patent and trademark searching, analysis, drafting, and prosecution, to post grant proceedings and litigation.

Technical Background

Prior to joining the firm, Kendall applied her chemical and biological engineering background to design and build a prototype device for digital control of pH in microfluidic devices, resulting in a patent. During law school, Kendall worked as a patent analyst, conducting patent searches to generate ISRs and Written Opinions for PCT applications as well as to provide patentability, state of the art, and freedom to operate analyses for law firms and corporate clients.

Strategic IP Protection

Kendall leans on her background to quickly understand complex inventions and to formulate effective strategies for their protection. As a patent prosecutor, Kendall works to efficiently obtain strong claims for her clients and has procured both utility and design patents in areas such as battery and electrochemical technology, semiconductors, polymers, peptides, chemical compositions, industrial processing devices, footwear, and athletic gear. On the trademark side, Kendall conducts trademark searching, analysis, and prosecution to inform, advise, and assist clients looking to establish or grow their brand.

Litigation Experience

Kendall also has experience in federal court and before the PTAB. From the initial filing of a complaint through to settlement, trial, and/or appeal to the Federal Circuit, Kendall has represented clients in ANDA litigation, patent, and trademark infringement claims, with experience focused on pharmaceuticals, cosmetic compositions, and biomedical devices, but extending to areas such communications systems, aircraft, and electronic devices. In addition, Kendall has experience challenging patents via IPR and European opposition proceedings, resulting in favorable settlement results and narrowing of challenged patent protection in order to clear the way for client innovation and product development.

Multidisciplinary technical knowledge

Before law school, Kendall studied chemical engineering at Colorado State University where she completed training in the chemical and mechanical arts, as well as additional study in the biochemistry and microbiology used in industrial scale bioprocessing. During her time at CSU, Kendall worked with a team to design and subsequently patent a device for communicating auditory information to deaf or hearing impaired users. Kendall’s work focused on designing and building an array of microfluidic electrochemical cells which allowed localized, instantaneous, and digitally programmable pH control and chemical production. The design work involved a synthesis of knowledge and techniques in the areas of electrochemistry, programming, laser processing, and circuitry as well as an understanding of biological constraints. This diverse training and practical experience has provided Kendall with the tools to understand and analyze developments and inventions in a variety of areas of art. 

Diverse IP perspectives

During law school Kendall gained a unique perspective on the patent acquisition process while working for a patent search and consulting firm. Kendall’s primary work was to generate ISRs and written opinions for PCT applications filed with the USPTO. During this time, Kendall gained familiarity with patent searching and identifying relevant prior art with an eye towards making anticipation and obviousness rejections. Kendall’s prior experiences in the roles of both inventor and patent searcher have given her valuable insight applicable in both prior art searching and patent prosecution work.

Kendall has experience providing research, writing, and support work for both litigation in the federal courts and patent challenges before the PTAB. Specifically, she has been involved in litigation support for several pharmaceutical cases and has drafted complaints and motions for trademark and unfair competition cases in federal court, as well as providing research and support for several IPR challenges at the USPTO.

  • Overview

    Kendall Gurule counsels clients in a number of the chemical, materials science, pharmaceutical, and biomedical fields. Her practice spans the patent and trademark life cycle, from patent and trademark searching, analysis, drafting, and prosecution, to post grant proceedings and litigation.

    Technical Background

    Prior to joining the firm, Kendall applied her chemical and biological engineering background to design and build a prototype device for digital control of pH in microfluidic devices, resulting in a patent. During law school, Kendall worked as a patent analyst, conducting patent searches to generate ISRs and Written Opinions for PCT applications as well as to provide patentability, state of the art, and freedom to operate analyses for law firms and corporate clients.

    Strategic IP Protection

    Kendall leans on her background to quickly understand complex inventions and to formulate effective strategies for their protection. As a patent prosecutor, Kendall works to efficiently obtain strong claims for her clients and has procured both utility and design patents in areas such as battery and electrochemical technology, semiconductors, polymers, peptides, chemical compositions, industrial processing devices, footwear, and athletic gear. On the trademark side, Kendall conducts trademark searching, analysis, and prosecution to inform, advise, and assist clients looking to establish or grow their brand.

    Litigation Experience

    Kendall also has experience in federal court and before the PTAB. From the initial filing of a complaint through to settlement, trial, and/or appeal to the Federal Circuit, Kendall has represented clients in ANDA litigation, patent, and trademark infringement claims, with experience focused on pharmaceuticals, cosmetic compositions, and biomedical devices, but extending to areas such communications systems, aircraft, and electronic devices. In addition, Kendall has experience challenging patents via IPR and European opposition proceedings, resulting in favorable settlement results and narrowing of challenged patent protection in order to clear the way for client innovation and product development.

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