Preparation and Prosecution of Patent and Trademark Applications
Patent, Trademark, Copyright and Trade Secret Litigation
Patent, Trademark, Copyright Trade Secret and Licensing Advice and Counseling
counsels clients in connection with intellectual property protection and
• He concentrates his litigation practice in the areas of patent infringement, trademark infringement, trade secret litigation, non-compete agreements and business disputes.
• He has handled numerous multi-million dollar trade secret, franchise, contract and intellectual property cases.
• As a registered patent attorney he has drafted and prosecuted patent applications in a wide array of technologies including:
- food storage and serving apparatus
- engine components
- medical devices
- fuel systems
- refrigeration/AC systems
- industrial tools
- network security
- optical coatings
- optical cleaning methods
- clothing dryers
- laser metal deposition
- particulate transport technology
• He also counsels clients in connection with trademark, copyright, trade secrets, technology license agreements and intellectual property opinions and infringement analyses.
• Mr. Kelly is qualified as a mediator under Missouri Supreme Court Rule 17. He is on the panel of mediators for USA&M.
Recent Intellectual Property Litigation
(E.D.MO 2017) - Lead counsel for plaintiff in copyright infringement case involving website retailer.
(W.D.MO 2016-2017) – Lead counsel for defendant in trademark case involving global trucking enterprise.
(W.D.MO 2016-2017) – Lead counsel for defendant in trademark case involving municipality and telecommunications provider.
(E.D.MO 2016-2017) – Lead counsel for defendant in trademark case involving competing lawn service companies.
(IL State Court 2012-2015) – Lead counsel for defendant in anti-trust and defamation case involving funeral home business.
(E.D.TX 2015) – Lead counsel for defendant in patent infringement case involving medical documentation software.
(E.D.TX 2014) – Lead counsel for defendants in multi-defendant patent infringement case involving medical prescription software.
(E.D.TX 2014) – Co-counsel for defendant in multi-defendant patent infringement case involving medical documentation software.
(E.D.MO 2012) – Lead counsel for plaintiff financial services and retirement planning company in copyright infringement claim.
(E.D.MO 2012) – Lead counsel for defendant boat manufacturer in trademark infringement claim.
(D.NJ 2011) – Lead counsel for defendant container and packaging manufacturer in patent infringement claim involving plastic film cutting technology.
(C.D.CA. 2011) – Lead counsel for defendant in multi-defendant patent infringement claim involving medical documenting software systems.
(D.NJ 2011) – Lead counsel for defendant Internet gaming company in patent infringement case involving network lottery technology.
(E.D.TX. 2010) – Lead counsel for seven defendants in multi-defendant patent infringement claim involving medical billing systems.
(E.D.TX. 2010) – Lead counsel for three defendants in multi-defendant patent infringement claim involving medical documenting software systems.
(E.D.MO 2010) – Lead counsel for plaintiff in trademark infringement case involving molded plastic products.
(E.D.MO 2010) – Lead counsel for defendant Internet gaming company in patent infringement case involving multi-media signal compression technology.
-Bar Association of Metropolitan St. Louis
-American Intellectual Property Law Association
-International Trademark Association
No Safe Space From Offensive Trademarks! Supreme Court Rules Law Prohibiting Registration of Disparaging Trademarks is Unconstitutional, 06/17, The Blog for Business Law.
Someone, Please Tell Me What is an Offensive Trademark! Supreme Court to Decide Constitutionality of Restrictions on Registering Disparaging Trademarks, 10/16, The Blog for Business Law.
Schlafly Brewery Shows How to Make a Sour Blonde: Wins Trademark Dispute Against Phyllis Schlafly, 09/16, The Blog for Business Law.
Doing Business in Illinois or with Illinois Companies? Beware the Illinois Eavesdropping Statute!, 02/16, The Blog for Business Law.
Virtual Reality, Virtual Laws, 11/14, Intellectual Property Magazine.
What we Learned From the Specialized Trademark Incident Part 3 – The Internet Determines Whether Marks are Confusingly Similar, 04/14, The Blog for Business Law.
What we Learned From the Specialized Trademark Incident Part 2 – Never Miss an Opportunity to Publicly Scold Your Competitor, 04/14, The Blog for Business Law.
What We Learned From the Specialized Trademark Incident Part 1 – Always Investigate the Infringer’s Military Service History, 04/14, The Blog for Business Law.
Legal Issues Protecting Your Product Intellectual Property Indemnity, (Featured Contributor), 02/2009, Midwest CEO Magazine
Reusing Patented Medical Devices, 06/12/2007, IPFrontline.com
Refurbishing Patented Products, 07/10/2007, IPFrontline.com
FACTA: New Law Imposes Duties On All Businesses As to Disposal of Consumer Information, 03/06/2006, St. Louis Small Business Monthly
Branding & Promotion: What Every Business Person Should Know About Trademarks - But Doesn't, Clayton Chamber of Commerce Educational Series, 05/16/18
Mediating An Intellectual Property Dispute, Bar Association of Metropolitan St. Louis, 03/07/17
Current Issues in Litigating & Mediating Employment Cases, Intellectual Property Update, United States Arbitration & Mediation, 11/11/16
Intellectual Property Issues, Insights and Advice For the Non-IP Lawyer, Missouri Bar - Missouri Judicial Conference, 09/22/16
Improving Your Business Game: Understanding and Using Trademarks, Open presentation to firm clients and contacts, 01/20/2012
Business Torts - Looking Beyond Traditional IP Litigation to Protect IP - Co-Presenter, 9th Annual Rocky Mountain Intellectual Property & Technology Institute Denver, Colorado 06/01/2011
Improving Your Game - Understanding and Leveraging the Patent System, Open presentation to firm clients and contacts, 11/18/2009
Business Retention Strategies and Obligations, Lorman Education Services, Continuing Legal Education Seminar, 08/11/2009
Disappearing Ink: Unenforceable Contract Provisions: Select Issues of Invalidity in Intellectual Property Provisions, Association of Corporate Counsel – St. Louis Chapter, 28th Annual Corporate Counsel Institute, 05/14/2009
Where the Internet and Intellectual Property Law Collide What You Don’t Know Can Hurt You, Business Marketing Association – St. Louis, 04/02/2009
Information Retention Strategies and Obligations A Guide to Best Practices for Managing Information, Including Complying with the New Federal Rules of Civil Procedure, Business and Management Program, St. Louis Community College, 03/12/2009
Mr. Kelly is a fervent cyclist with a penchant for tackling world-famous epic climbs and endurance gravel events. He is also an enthusiastic runner and hiker, who is partial to spending time outdoors with his family and his Labrador Retrievers.
J.D., Washington University School of Law, 1987 (Order of Barristers)
B.S., Duke University, 1984 (Physics)
U.S. Supreme Court
U.S. Patent and Trademark Office
District of Columbia
U.S. District Court Eastern District of Missouri
U.S. District Court Southern District of Illinois
U.S. District Court Eastern District of Texas
U.S. Court of Appeals 8th Circuit
U.S. Court of Appeals 11th Circuit
U.S. Court of Appeals Federal Circuit