Edward J. Kelly
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).
- 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.
- Quoted, “What You Need to Know About Patent Litigation in the UK,” Law360 (August 6, 2018)
- Co-author, “UK’s UPC Ratification Brings Political Clarity,” Intellectual Property Magazine (May 30, 2018)
- Quoted, “UK To India: Global Developments Patent Attorneys Should Know,” Law360 (May 7, 2018)
- Co-author, “UK Patent Ruling Sharpens Contrast With US Practice,” Law360 (April 18, 2018)
- Co-author, “Comparing EU And US Standard-Essential Patent Guidance,” Law360 (December 21, 2017)
- Co-author, “European Patent Filing Strategies in the Age of Brexit,” Bloomberg BNA World IP Report (November 2016)
- Quoted, “5 Things US Cos. Must Consider As EU Unitary Patent Nears,” IP Law360 (May 11, 2015)
- Co-author, “Exploring the Differences Between Post-Grant Proceedings in the U.S. and the EU,” Bloomberg BNA's Patent, Trademark & Copyright Journal (March 20, 2015)
- Co-author, “UPC recap: have you been paying attention?,” Intellectual Property Magazine (February 2015)
- Co-author, “On the verge of the UPC,” Intellectual Property Magazine (March 2013 issue)
- Co-author, “How The EU Patent Court Will Protect Against Patent Trolls,” Law360 (March 11, 2013)
- Co-author, “The debate is over: The rules are set, but the players are moving. Ropes & Gray reviews the unitary patent and the Unified Patent Court,” The Patent Lawyer (January/February 2013)
- Quoted, “IP Litigation Roundup: European Union to Create Unified Patent Court,” The Am Law Litigation Daily (December 14, 2012)
- “PTO Patent Appeals Board Set to Raise Its Profile," National Law Journal (May 12, 2008)
- "Open Source Licensing,” AUTM Manual of Licensing Third Edition
- Speaker, “Strategic Deals & Patent Technology Transaction Trends,” 2020 Korea IP Summer Forum (August 27, 2020)
- Speaker, “(Almost) Everything You Need to Know About the Unified Patent Court” and “Avoiding Pitfalls in U.S.-Originated European Patent Applications,” and Event Co-Host, European IP Summit (October 4-5, 2018)
- Speaker, “Analyzing US IP Trends and the Impact on European IP Strategy,” Managing Intellectual Property European Patent Forum 2018 (September 11, 2018)
- Speaker, “Identifying Opportunities for Partnering with FinTech Companies,” World Congress 15th Annual Summit on Protecting Innovations in the Financial Services Industry (New York) (July 2018)
- Speaker, “European Patent Practice Points for U.S. Attorneys: Lessons Learned from EPO Oppositions on Parallel Litigations,” Boston Patent Law Association’s Technical Inventions in European Patent Law Conference (June 7, 2018)
- 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)
DisclaimerRopes & Gray International LLP is a limited liability partnership registered in Delaware, United States of America and is a recognised body regulated by the Solicitors Regulation Authority (with registered number 52100).
- JD, Boston College Law School
- BS (Electrical Engineering), Lehigh University
Admissions / Qualifications
- England and Wales, Solicitor
- U.S. Patent and Trademark Office
- European Patent Office
- U.S. Court of Appeals for the Federal Circuit
- LMG Life Sciences Licensing & Collaboration Firm of the Year (2020)
- World IP Review Leaders (2017, 2021)
- The Best Lawyers in America (2015-2021)
- The Legal 500 (2013-2015)
- Chambers USA: America's Leading Lawyers for Business (2008-2020)
- Massachusetts Super Lawyers (2008-2020)
- Patent Research Review, Named one of 2011 America's Top Patent Prosecutors