Roberto J. Fernandez

Senior Counsel

Roberto J. Fernandez

Senior Counsel

Roberto Fernandez is a seasoned patent attorney that understands how to construct a formidable patent portfolio with strategic business advantages that can be leveraged against competitors for years to come. His extensive experience preparing and prosecuting utility and design patent applications provides unique insights that drive future innovation and growth. Roberto has conducted oral hearings before the Patent Trial and Appeal Board (PTAB), serving as lead counsel multiple times.

Roberto has harnessed his unique background to provide clients with detailed and technical counsel in numerous inter partes review (IPR) and ex parte reexamination proceedings before the PTAB. He routinely publishes thought leadership pieces on IPR practice developments, and he has also served as counsel in district court actions for patent infringement. Roberto also has performed due diligence reviews of intellectual property portfolios in connection with various business ventures, including acquisitions, spin-offs, and more.

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 various electronic devices. He has also represented a significant number of pro bono clients and is honored to have helped many secure patent protection for their inventions.

Roberto is a member of the firm’s Mechanical & Electromechanical Technologies Practice, PTAB Trials Practice, and the Design Rights Team. He is also a member of the firm’s Automotive, Food & Beverage, and Energy Industry Teams.

Awards and Recognition

  • Illinois Super Lawyers® Rising Star (2022-2024)

Presentations and Publications

  • 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)
20 February 2024 Events

2023 PTAB Year in Review

The USPTO Patent Trial and Appeal Board had another newsworthy year in 2023. Please join Foley & Lardner for a webinar looking back at the past year's major developments and how they may impact practice before the PTAB in 2024.
23 August 2023 Blogs

Nothing for Free: Federal Circuit Clarifies Commercial Success is All About Sales

In affirming final written decisions of the Patent Trial and Appeal Board (PTAB) in two inter partes reviews (IPRs), the Court of Appeals for the Federal Circuit (CAFC) ruled that only actual product sales count toward a showing of commercial success.
11 July 2023 Manufacturing Industry Advisor

Top Legal Issues Facing the Manufacturing Sector in 2023

As we embark on the second half of 2023, this second annual Manufacturing White Paper examines the business and legal considerations that continue to impact the industry and offers the perspectives and insights of attorneys with deep experience serving as trusted advisors to manufacturing companies.
09 March 2023 In the News

Roberto Fernandez Discusses New PTAB Fintiv Guidance

Foley & Lardner LLP Associate Roberto Fernandez is quoted in the Law360 article, “Vidal Puts Fintiv Back In The Spotlight With New Ruling.”
01 March 2023 Blogs

USPTO Director Vidal Closes Fintiv Escape Hatch on Discretionary Denial

Practice at the Patent Trial and Appeal Board has evolved at a breakneck pace during the tenure of U.S. Patent and Trademark Office Director Vidal.
24 January 2023 Honors and Awards

Foley Attorneys Named to 2023 Illinois Super Lawyers List

Foley & Lardner LLP is proud to announce that 23 of its Chicago attorneys have been named to the 2023 Illinois Super Lawyers and Rising Stars lists.