Edward J. Kelly

Partner

kelly-edward-j

Contact

  • JD, Boston College Law School
  • BS (Electrical Engineering), Lehigh University

Qualifications

  • Massachusetts
  • England and Wales, Solicitor
  • U.S. Patent and Trademark Office
  • European Patent Office

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • Boston IP American Inn of Court
  • Engineering Advisory Board, Lehigh University
  • Past Co-Chair BBA IP Law Section
  • World IP Review Leaders (2017)
  • The Best Lawyers in America (2015-2018)
  • The Legal 500 (2013-2015)
  • Chambers USA: America's Leading Lawyers for Business (2008-2017)
  • Massachusetts Super Lawyers (2008-2016)
  • Patent Research Review, Named one of 2011 America's Top Patent Prosecutors

Edward J. Kelly

Partner

Ed provides intellectual property advice and legal opinions and represents clients with appeals at the U.S. Patent Trial and Appeals Board, oppositions before the European patent office, and re-examination proceedings at the U.S. Patent Office. He also provides strategies for securing patents, trademarks and copyrights to a broad range of clients.

Ed works with a number of clients, protecting and defending IP related to medical devices, telecommunication, technology, semiconductor and MEMs technology, computer network technologies, and software. He also represents clients during investments, on legal opinions and with licensing. He has extensive experience before the Board of Appeals at the U.S. Patent Office, and before the examining and opposition division of the European Patent Office.

Prior to becoming an attorney, Ed worked as a hardware and software design engineer in the Signal Processing Group of Raytheon, the Benjamin Franklin Institute for Robotics, and the medical electronic division of Hewlett-Packard (now Philips).

Experience

  • Advising a medical device company in relation to patent revocation proceedings before the UK High Court.
  • Counsel to a U.S. sterilization company in opposition proceedings before the European Patent Office.
  • Represents a U.S. software company with enforcing and licensing its U.S. patents.
  • Wrote and prosecuted patents for a Scottish company on breakthrough imaging technology that won the Queen's Award for Enterprise (2008).
  • Represented Avaya, TPG and Silverlake on the $900 Million acquisition of Nortel’s Enterprise business, including acquisition and licensing of several thousand patents related to telecommunications and mobile devices.
  • Represented a U.S. software company as patent proprietor in an opposition before the EPO, successfully defending the patent.
  • Represented a U.S. software company with enforcing and strategically licensing its patent portfolio.
  • Represented a U.S. medical device manufacturer in a 2011 re-examination proceeding before the U.S. Patent Office, successfully securing affirmation of patent claims simultaneously being litigated in U.S. Federal Court.

Publications

Presentations

  • Moderator, “Interplay Between the U.S. and European Patent Systems,” MIP European Patent Forum, Paris (September 2017)
  • Speaker, 13th Annual Patents for Financial Services Summit (July 21-22, 2016)
  • Speaker, “Unified Patent Court: The Advent of NPE Litigation in Europe?” Ropes & Gray IP Master Class Financial Services Roundtable (April 28, 2016)
  • "Europe’s Unitary Patent System: What’s Next for U.S. Medical Device Companies?" BAIMA Luncheon Seminar, Silicon Valley (March 13, 2013)