George Wheeler is Of Counsel at McAndrews. He has assisted corporate clients for more than 25 years with a wide variety of patent matters, securing hundreds of patents in such industries as chemical, mechanical and medical technologies. His specialty is patent analysis, both for patentees and for opponents of patents, and prosecution and strategic development of high-value patent portfolios. His work also includes over 25 post-grant patent review proceedings in the U.S. Patent and Trademark Office.
George is a versatile patent prosecutor who excels both in understanding and broadly claiming a wide variety of technologies to capture maximum value from chemical and mechanical inventions. He has extensive experience in a wide range of industries and applications, including prefillable syringes, vials and other primary packaging developed for pharmaceutical companies. His strategic focus is on prosecution of high value-added patents and portfolios for rapidly developing technologies, particularly Plasma Enhanced Chemical Vapor Deposition (PECVD) on thermoplastic vessels.
He is known for his ability to rapidly, thoroughly and successfully prepare, file and prosecute a large family of high-value patent applications useful for attracting investors, beginning with a multifaceted nascent technology and continuing through specific commercial applications. He is a master at drafting a large number and variety of patent claims on a new development, in provisional patent applications, to effectively support early priority dates for many inventions. The resulting patent applications and patents impress potential investors as an unusually valuable and varied portfolio.
George’s career includes extensive in-house experience, beginning with a three-year role as a patent attorney for two divisions of Procter & Gamble, where he was responsible for patent prosecution, patentability and infringement opinions, numerous confidential disclosure agreements with ingredient suppliers and business unit counseling. He also was a member of the patent team at Morton Thiokol, Inc. for six years, working with multiple business units on both domestic and international patent preparation, prosecution, patentability, patent infringement, freedom to operate and trademark clearance opinions, copyright registrations, confidentiality agreements and business unit counseling as well. At Morton, he successfully prosecuted three patent reexamination requests, and investigated and negotiated the first Copyright Clearance Center photocopy license.
George’s accomplishments for clients include:
- Defending a patent owner against three merged reexamination requests by filing an appeal resulting in confirmation of all the original claims of the patent without amendment;
- Prosecuting four reexamination requests against an opponent’s related patents to final rejection, thus allowing the client to obtain a stay of pending litigation while launching its product;
- Improving upon a U.S. patent already involved in litigation by obtaining a broader patent that was successfully asserted in the same litigation;
- Successfully opposing an opponent’s blocking European patent to open up the European market for a client’s principal product;
- Prosecuting numerous patent reexaminations successfully for both patentees and for opponents;
- Acting as an expert witness respecting prosecution of original and reissued patents; and
- Preparing numerous legal opinions counseling clients how to proceed commercially, how and whether to litigate, or how to structure a license.
George’s other professional accomplishments include: election as Secretary of the American Intellectual Property Law Association (AIPLA) (2003-2006); election as a member of the Board of Managers of the Intellectual Property Law Association of Chicago (IPLAC) (2006-2008); serving as Chair (2001-2003) and Vice Chair (1999-2001) of the Chemical Practice Committee of the AIPLA; serving as Chair (2012-2016) and Vice Chair of the U.S. Patents Committee of the IPLAC; public speaking to the AIPLA and local patent law committees and associations; teaching younger attorneys and agents how to prepare and prosecute patent applications and pass the Patent Office Examination; editing and presenting periodic summaries of all United States court decisions involving chemical, biotechnological, and medical technologies for the Chemical Practice Committee of the AIPLA.
Year Joined Firm: 1991
Education/Alumni:
- John Marshall Law School, LL.M., Intellectual Property Law
- University of Wisconsin, J.D.
- University of Wisconsin, B.S., Chemistry
