Roberto J. Fernandez

Associate

Overview

Roberto J. Fernandez is a seasoned patent attorney that understands how to construct a formidable patent portfolio which provides strategic business advantages that can be leveraged against competitors for years to come. In addition to extensive experience drafting and prosecuting utility and design patent applications, 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. Roberto has also served as counsel in Inter Partes review (IPR) proceedings before the PTAB and in district court actions for patent infringement. In recognition of his successes, Roberto was named to the 2022 Illinois Super Lawyers Rising Stars list. Each year, only 2.5 percent of attorneys in Illinois are named to this list.

Roberto’s technical experience spans numerous fields including automotive systems, engines, power generation systems, additive manufacturing, medical devices, consumer products, refrigeration, solar systems, lighting systems, fitness devices, and electronic devices. Roberto is proud to have a vibrant pro bono practice through which he has helped numerous clients secure patent protection for their inventions. Roberto regularly volunteers with the Chicago Inventors Organization, a local non-profit organization, to provide insights on the patenting process to underserved inventors in Chicago.

Roberto studied at the Milwaukee School of Engineering (B.S. mechanical engineering), the University of Notre Dame (M.S. patent law), and the Chicago-Kent College of Law. 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 worked at Foley as a patent agent full time throughout his entire enrollment at Chicago-Kent.

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

  • Panelist – Practice Before the PTAB, PTAB Bar Association (July 2022)
  • Presenter, Idea - Invention - Industry, Chicago Inventors Organization Annual Conference (October 2019)
  • Alumni Speaker, Milwaukee School of Engineering Annual Scholarship Luncheon (October 2016)
     

Admissions

  • PTAB Bar Association
  • United States Patent and Trademark Office
  • Illinois
     

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