Derek B. Lavender

Derek is a registered patent attorney and practices in all areas of intellectual property law, with a focus on patent preparation and prosecution. He has experience preparing and prosecuting patent applications in technologies such as medical devices, material science, electrical control systems, agricultural equipment, electro-pneumatic systems, electro-hydraulic systems, and transmission assemblies among others. He further applies his experience in patent law to execute patentability and non-infringement opinions and has experience reviewing and drafting patent licensing agreements. One of Derek’s primary roles at Taft includes developing and managing patent portfolios to ensure efficient and robust protection of intellectual property.

Prior to joining Taft, Derek worked for several years at Harley-Davidson Motor Company in the full vehicle test and evaluation group while earning his B.S. in mechanical engineering from Kettering University. He received his J.D. from Indiana University Robert H. McKinney School of Law with a graduate certificate in Intellectual Property Law.

Patent Portfolio Management

• Developing and managing patent portfolios containing thousands of patent matters locally in the U.S. and in foreign jurisdictions. Managing local patent team to implement client objectives in the U.S. and coordinating foreign associates to ensure patent portfolios are efficiently and consistently managed in all jurisdictions.
• Working with startup founders to develop Intellectual Property strategies to protect the technological developments and brands of the startup. Experience developing IP strategies with a focus towards attracting investors and future licensees.
• Creating budgets for major companies and startups alike to provide predictable cost expectations for implementing desired IP portfolio strategies.

Patent Application Drafting and Prosecution

• Preparing and filing hundreds of patent applications. Experience prosecuting applications from filing to issuance, having obtained hundreds of issued patents for clients.
• Work with sophisticated in-house legal counsel and inventors alike to prepare patent applications that effectively implement business objectives while protecting valuable technical advancements in their industry.
• Experience working directly with independent inventors to protect their technology and obtain license agreements to monetize their technology.
• Experience organizing and leading hundreds of Examiner Interviews to discuss patentability of pending applications to execute efficient prosecution and expedite issuance of pending applications.

Agricultural/Construction/Forestry/Automotive Machine-Focused International Businesses

• Developing and managing patent portfolios for many large machine clients ranging from large agricultural machines to transmission specific solutions. Ensuring efficient and robust protection of intellectual property for both major equipment providers and startups in the agricultural industry.
• Working closely with clients to provide strategic guidance behind decades-long heavy machinery patents. Drafting patent applications related to process improvement for a nationally known agricultural heavy machinery brand and obtaining valuable patent protection therefor.
• Developing complex international filing strategies for agricultural startups to promote future growth and potential investor confidence. Working with startups to build the value of the startup to potential outside investors or acquirers.

Medical-Focused Businesses

• Developing and managing patent portfolios for many medical device clients—including endotracheal tubes, urological catheters, ostomy appliances, negative pressure wound therapy devices, infusion devices, optometry procedure chairs/lane assemblies, and surgical stools, among others. Ensuring efficient and robust protection of intellectual property for clients in the medical device space ranging in size from small-sized companies in a specialized medical industry to multinational corporations offering thousands of medical device products.
• Working closely with company founders and/or in-house legal counsel to create patent portfolios related to internal research and development efforts to ensure IP strategies are created to promote business growth and protect the valuable innovations developed by the company.
• Maintaining and prosecuting complex international portfolios to ensure client objectives are obtained.

Startup and Small Business

• Working with startups and small businesses to provide reasonable guidance for IP protection during early phases of business growth.
• Helping clients identify and protect key IP assets to promote growth and position new companies for future success.
• Providing guidance regarding patentability of new concepts and identifying potential infringement issues as new technology is being developed and developing growth strategies in view thereof.