Roberto J. Fernandez

Associate

Overview

Roberto J. Fernandez is a patent and intellectual property attorney with Foley & Lardner LLP. Roberto has extensive experience preparing and prosecuting patent applications both in the U.S. and internationally. He understands how to construct a formidable patent portfolio which provides strategic business advantages that can be leveraged against competitors.

Roberto’s technical experience spans various fields including automotive, engines, power generation, additive manufacturing, medical devices, consumer products, refrigeration, solar systems, lighting systems, and electronic devices. Roberto is also an adroit prosecutor of design patent applications and has helped clients secure design protection in the U.S. and internationally.

Roberto has conducted oral hearings before the Patent Trial and Appeal Board (PTAB), serving as lead counsel multiple times. His zealous advocacy has resulted in reversal of an Examiner’s rejections on several occasions. He also has experience with Inter Partes review proceedings and has assisted with actions for patent infringement filed in various jurisdictions.

Roberto also has a vibrant pro bono practice through which he has helped numerous clients secure patent protection for their inventions. Additionally, Roberto regularly volunteers with the Chicago Inventors Organization, a local non-profit organization, to provide insights on the patenting process to underserved individual inventors in Chicago.

Roberto studied at the Milwaukee School of Engineering (B.S. mechanical engineering, 2014), the University of Notre Dame (M.S. patent law, 2015), and the Chicago-Kent College of Law (J.D., 2019). While at Chicago-Kent, Roberto earned several CALI awards, including in patent law, patent office practice, international intellectual property law and law of trade secrets.

Roberto is a member of the firm’s Mechanical & Electromechanical Technologies Practice, PTAB Trials group, and the design rights group. Roberto is also a member of the firm’s Automotive, Food & Beverage, and Energy industry teams.

Selected Presentations and Speaking Engagements

  • Alumni Speaker, Milwaukee School of Engineering Annual Scholarship Luncheon (October 2016)
  • Presenter, Idea - Invention - Industry, Chicago Inventors Organization Annual Conference (October 2019)

Admissions

  • Illinois
  • United States Patent and Trademark Office