Christopher R. Carroll

Christopher R. Carroll

Christopher R. Carroll / Shareholder

Christopher R. Carroll, a shareholder of The Small Patent Law Group LLC, concentrates his law practice in the areas of patent application preparation and prosecution, as well as in intellectual property-based transactions, licensing, and portfolio management. Mr. Carroll has been working in the field of intellectual property law since 2000 when he began working as a clerk for a large patent boutique in Chicago, Illinois while in law school.

“Chris breaks log jams – securing issuances while reducing our overall cost per case. He really moved the needle to the good for our operating metrics.”

Shawn McClintic, Executive CounselIntellectual Property for General Electric Transportation

Recognitions

  • Top 10 Firm for quality patents in Art Unit 3600 at the USPTO (PatentBots)
  • Fortune 500 Go-To Law Firm
  • SuperLawyer Rising Star
  • Best Intellectual Property Attorneys, 2020 (St. Louis Small Business Monthly)

Law School

During law school, Christopher R. Carroll continued to work for the patent boutique while writing articles for publication and serving as the Editor-in-Chief of the Journal of Law, Technology, and Policy at the University of Illinois College of Law. As Editor-in-Chief, Mr. Carroll managed the publication of the symposium issue on legal regulation of new technologies, which featured contributions and articles from former White House Chief of Staff John D. Podesta, Judge Alex Kozinski of the United States Court of Appeals for the Ninth Circuit, Judge James F. Holderman of the United States District Court for the Northern District of Illinois, and Professor Edward W. Felten of Princeton University. This symposium issue also included an article authored by Mr. Carroll on the potential antitrust consequences of licensing biotechnology patents (Selling the Stem Cell: The Licensing of the Stem Cell and Possible Antitrust Consequences, 2 J. L. Tech. & Pol’y 281, 435 (2002)). Mr. Carroll continued to publish additional articles both during and after law school on a variety of subjects, including the use of arbitration panels in intellectual property disputes (T. Malloy, S. Bartos and C. Carroll, An Alternative for Righting the Wrongs of an Arbitration Panel in IP Disputes, The Metropolitan Corporate Counsel (June 2002)) and class certification in federal court (Blocking and Tackling Class Certification in Federal Court, CBA Record 48-51 (February/March 2004)). He also has co-authored anamicus curiaebrief on patent issues before the U.S. Court of Appeals for the Federal Circuit.

After Graduation

Upon graduation from law school with his Juris Doctor, cum laude, in 2003, Christopher R. Carroll remained at the patent boutique firm in Chicago, focusing his work on patent application preparation and prosecution on a variety of technologies that included surgical devices, medical imaging systems, chemical compositions, software-based technologies, wireless networking, and aerospace technologies, among others. Mr. Carroll also worked extensively in patent litigation, where he was involved in all phases of litigation from pleadings, through discovery, and on to settlement or trial. Mr. Carroll also prepared numerous opinions on patentability and infringement for a variety of technologies.

Mr. Carroll moved to Saint Louis, Missouri and joined The Small Patent Law Group, LLC in 2007. At the Small Patent Law Group, he has continued to focus his practice on the preparation and prosecution of patent applications on such technologies as transportation systems and methods, medical devices, security systems, semiconductor devices, software-implemented technologies, and gaming systems, among others. Mr. Carroll also has expanded his practice to include IP-related transactional work, such as drafting technology transfer agreements, conducting infringement and patent validity analyses for clients considering developing various products and/or acquiring companies with products that are the subject of the analyses, negotiating and drafting licensing and settlement agreements involving IP rights, counseling clients on the risk of open source software and ways to remediate these risks, and counseling clients on increasing the value of IP portfolios.

With respect to software-implemented technologies, Mr. Carroll has focused many efforts in studying the risks associated with these technologies by the open source licenses commonly associated with the technologies, and the recent case law developments of the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit directed to Section 101 patentability of these technologies. Mr. Carroll has provided numerous presentations to both clients and other members of the bar on best practices for recognizing the risks of using open source software, mitigating these risks, techniques for drafting patent applications to satisfy the ever-changing standards of how the courts interpret Section 101, and techniques for prosecuting these applications with success.

Patent Lawyer with Engineering Degree

Mr. Carroll has his Bachelor of Science, with honors, from the University of Illinois College of Engineering in Materials Science and Engineering. Mr. Carroll focused his studies there on semiconductor-based technology and processes. While at the University of Illinois, Christopher R. Carroll worked with Intel Corporation, MEMC Electronic Materials, Inc., and several start-up companies in the field of microprocessor fabrication. Mr. Carroll was recognized as a Knight of St. Patrick by the College of Engineering, a prestigious award that recognizes leadership, excellence in character, and exceptional contribution to the College of Engineering and its students. The award is one of the highest honors received by a student from the College of Engineering. Mr. Carroll also was recognized in the Senior 100 Honorary, a University of Illinois Alumni Association program that acknowledges notable University of Illinois seniors for both past achievement and future commitment to the University of Illinois.

Mr. Carroll is registered to practice before the U.S. Patent and Trademark Office, the State of Illinois, the State of Missouri, as well as several federal courts, including the U.S. Court of Appeals for the Federal Circuit, the U.S. District Court for the Northern District of Illinois, and the U.S. District Court for the Eastern District of Missouri.

ACTIVITIES

  • United States Patent and Trademark Office
  • Supreme Court of Illinois
  • Supreme Court of Missouri
  • Former Board Member, University of Illinois College of Law Alumni Board
  • Former Board Member, Edwardsville Children’s Museum

EDUCATION

  • University of Illinois at Urbana-Champaign (B.S. with honors in Materials Science and Engineering with a focus on Electronic Materials and Processes, 2000)
  • University of Illinois at Urbana-Champaign (J.D. cum laude, 2003)

Publications & Presentations

  • Section 101 Revisited: The Berkheimer Memo And The New Burden On Examiners, CLE Presentation, April 2018
  • Multiple Actor Infringement, CLE Presentation, February 2018
  • Reciting Inventive Concepts In Claims & Claiming Graphical User Interfaces In Light Of Alice and Section 101, CLE Presentation, February 2018
  • 2017 Patent Law Update, CLE Presentation, January 2018
  • Software-based Patent Applications Best Practices For Preparation & Prosecution, CLE Presentation, January 2016
  • Changing Interpretations Of Patent Claims Pursuant To Section 112, CLE Presentation, June 2015
  • Patent Subject Matter Eligibility After Alice Corp. v. CLS Bank, CLE presentation, 07-August-2014
  • Open Source Software, CLE Presentation, September 2010
  • Patent Acquisition/Licensing Problems & Solutions, July 2009
  • C. Carroll, Blocking and Tackling Class Certification in Federal Court, CBA Record 48-51 (February/March 2004)
  • T. Malloy, S. Bartos and C. Carroll, An Alternative for Righting the Wrongs of an Arbitration Panel in IP Disputes, The Metropolitan Corporate Counsel (June 2002)
  • C. Carroll, Selling the Stem Cell: The Licensing of the Stem Cell and Possible Antitrust Consequences, 2 J. L. Tech. & Pol’y 281, 435 (2002)
  • Prosecution Best Practices: BRI, Design Choice, Hindsight Reconstruction, In re Schreiber, and GUI Design Applications, CLE Presentation, February 2017