Intellectual Property Attorneys

Dean D. Small / Founding Member

Dean D. Small, the founding member of the firm, concentrates his law practice in the areas of intellectual property based transactions, licensing and portfolio management. Mr. Small has been working in the field of intellectual property law since 1989 when he began working as a patent examiner in the U.S. Patent office. After leaving the Patent Office, Mr. Small joined a large Washington, D.C. –based Intellectual Property (IP) boutique firm where he wrote and prosecuted patent applications for over three years while completing the night program of Catholic University School of Law.

Prior to founding The Small Patent Law Group, Dean D. Small was a Partner with Armstrong Teasdale in St. Louis since 2003 after practicing for seven years in Chicago with a large IP boutique firm. Mr. Small has significant experience in litigation and mergers and acquisitions, equity investments and divestitures. Over the years, Mr. Small has developed and managed numerous patent portfolios and conducted many non-infringement and invalidity studies. An ongoing part of his practice involves negotiating, writing and analyzing technology transfer and licensing agreements.

ACTIVITIES

• The Missouri Bar
• Illinois State Bar Association
• American Bar Association
• American Intellectual Property

EDUCATION

• Catholic University of America (J.D. 1993)
• University of Missouri Columbia (B.S.E.E., 1988)

Publications & Presentations

• Speaker, “Managing Intellectual Property Assets After Sarbanes Oxley,” Association of Corporate Counsel-St. Louis Chapter (March 2004)
• Author, “Continuation Practice and Claim Construction,” AT Newsletter (Q1/2004)
• Author, “Intellectual Property Issues in Transactions with Financially Distressed Companies,” AT Newsletter (Q4/2003)
• Author, “General Commercial Liability Policy May Cover Infringement of Business Method Patents,” AT Newsletter (Q3/2003)
• Author, “Standards Committees and Duty of Disclosure,”AT Newsletter (Q2/2003)
• Author, “Foreign Prosecution Impact on U.S. Patent Claim Scope,” AT Newsletter (Q1/2003)
• Speaker, “Intellectual Property Issues in Business Transactions,” University of Missouri-Columbia School of Law (2001)
• Author, “Post-Acquisition Intellectual Property,” Contract Management (July 2001)

Joseph M. Butscher / Shareholder

Joseph M. Butscher is a shareholder of the firm. He has extensive patent application drafting and prosecution experience. His practice also includes noninfringement/invalidity opinions, product clearances, evaluation of patented technology in connection with mergers and acquisitions, reexamination, reissues, licensing, and trademark prosecution.

Mr. Butscher has worked with various technologies in the fields of mechanical, electrical, and even chemical engineering, including a wide range of aeronautical, aerospace, and automotive technologies, mechanical fasteners and connectors, HVAC and air handling systems, electronic stock and options trading systems, medical devices, electrical connectors for use in a wide range of equipment, broadband communications chips and related systems, compressed gas storage and delivery systems, olefin polymerization systems, in-ear speakerphones and hearing aids, electronic dart games, and computer jukeboxes.

Mr. Butscher is registered to practice before the U.S. Patent and Trademark Office.

Education

Lewis University, B.S., Physics (minors in mathematics and philosophy), 1997

Notre Dame Law School, J.D., 2000

Publications And Presentations:

Author,  Suggestions For The Pre-Appeal Brief Conference Pilot Program, Intellectual Property Today Volume 12, No. 12 (December, 2005).

Speaker, The Pre-Appeal Brief Conference Program, Chicago Bar Association, February 28, 2006

Speaker, Recent Changes To Appeal And Continuation Practice, AIPLA Roadshow, April 7, 2006.

Author, Recent Changes To Appeal And Process, presented at AIPLA Roadshow, April 7, 2006

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

Jay J. Hoette / Shareholder

Jay J. Hoette is a Shareholder of The Small Patent Law Group where he focuses his law practice in the areas of patent, trademark, and intellectual property. He has extensive experience in both preparation and prosecution of mechanical, electrical, electro-mechanical, business method, and computer-related patents. Mr. Hoette also has experience in rendering patentability, validity and infringement opinions.

Mr. Hoette received his B.S. in Civil Engineering in 2000 from Bradley University and his J.D. in 2003 from St. Louis University. He is registered to practice before the U.S. Patent and Trademark Office.

ACTIVITIES

• The Missouri Bar
• American Bar Association
• Bar Association of Metropolitan St. Louis
• American Intellectual Property Law Association (AIPLA)

EDUCATION

• St Louis University School of Law, (J.D., 2003)
• Bradley University (B.S.C.E., 2000)

Publications & Presentations

• Client Alert, “Laboratory Corporation of American Holdings v. Metabolite Laboritories, Inc.” (February, 2006)
• Author & Presenter, “Questioning the Limits of Patentability”, In-house Presentation (February, 2006)
• Presentation co-author, “Intellectual Property Overview for the Corporate Counsel, (January, 2006)
• Author & Presenter, “The Pitfalls of Reissue”, In-house Presentation (March, 2005)

Philip S. Hof/Patent Attorney/Partner

Philip S. Hof focuses his law practice in the areas of patent application preparation and prosecution in the mechanical, electrical, and chemical arts. He also performs due diligence related to intellectual property-based transactions, licensing, and portfolio management.

Mr. Hof received his B.S. magna cum laude in Chemical Engineering from the University of Missouri and his J.D. from IIT Chicago-Kent College of Law in Chicago, IL, with a certificate in Intellectual Property. While in law school, Philip S. Hof served as Executive Articles Editor of the Chicago-Kent Journal of Intellectual Property and also clerked at a Chicago-based IP boutique firm.

EDUCATION

• University of Missouri, Columbia, MO (B.S. Chemical Engineering, 2009)
• IIT Chicago-Kent College of Law (J.D., 2012)

William Breeze / Patent Attorney

Will Breeze focuses his legal practice in the areas of patent application preparation and prosecution in the mechanical, electrical, and chemical arts. He also performs due diligence related to intellectual property-based transactions, licensing, and portfolio management.

Mr. Breeze received his B.A. magna cum laude in Chemistry from North Carolina State University and his J.D. magna cum laude from North Carolina Central University.

While in law school, Mr. Breeze served as Editor-in-Chief of the North Carolina Central Law Review and served as an extern at the U.S. Patent and Trademark Office and with the patent team for a large pharmaceutical company. Mr. Breeze also gained experience working in the Patent Clinic providing legal services to low-income inventors.

Prior to joining the Small Patent Law Group, Mr. Breeze spent several years working as an in-house patent attorney for a multinational company. This experience developed Mr. Breeze’s client focused approach to patent preparation and prosecution and provided insight into the needs of in-house clients.

Mr. Breeze is registered to practice before the U.S. Patent and Trademark Office.

ACTIVITIES

United States Patent and Trademark Office
The District of Columbia Bar

EDUCATION

North Carolina State University, Raleigh, NC (B.A. Chemistry, 2012)
North Carolina Central University, Durham, NC (J.D., 2018)

Joseph F. Harding/Patent Attorney

Jason P. Gross focuses his practice primarily on the preparation and prosecution of U.S. and foreign patent applications in the mechanical, electrical, and chemical arts, including applications directed to biotechnology. He has also written and prosecuted applications for business methods.

In addition to the preparation and prosecution of patent applications, Jason P. Gross assists clients in developing and maintaining global patent portfolios, conducting state-of-the-art searches, and analyzing competitors’ intellectual property portfolios. His experience also includes representing clients in various litigation matters.

Mr. Gross is licensed to practice before the United States Patent & Trademark Office.

ACTIVITIES

• The Missouri Bar
• American Bar Association
• American Intellectual Property Law Association (AIPLA)
• Americorps, member of the Junior Board

EDUCATION

• Washington University (J.D., 2004)
• Washington University (B.S. Biomedical Engineering, 2000)

Joseph F. Harding/Patent Attorney

Joseph Harding practices intellectual property law, with a primary focus on patents. He has a wide range of experience in all phases of patent practice, from initial preparation of applications to enforcement. He has experience in procuring patent rights, including preparing applications, prosecution before the USPTO, and appeals.

He also has experience in litigating patents in the federal court system, as well as in providing patentability, validity, and infringement opinions. Further, Joseph Harding has experience in analyzing patents and patent portfolios in connection with transactions. He has worked with a wide variety of technologies, including medical devices, HVAC, consumer goods, electrical connectors, and vehicle systems. Prior to attending law school, Joseph Harding worked for 5 years as an engineer in the Chicago area, primarily designing steel mill equipment.

ACTIVITIES

• Supreme Court of Illinois
• United States District Court for the Northern District of Illinois
• United States Court of Appeals, Federal Circuit

EDUCATION

• Purdue University, West Lafayette, IN  (B.S. Mechanical Engineering, 1991)
• University of Michigan, Ann Arbor, MI  (J.D., cum laude, 2000)

Alison Hayes Hoette / Trademark Attorney

Josef Hoffmann / Patent Attorney

During his nearly 20 years of patent law practice, Josef Hoffmann has obtained substantial patent preparation and prosecution experience in the fields of mechanical engineering, electrical engineering, and computer science. Mr. Hoffmann was a partner at a patent boutique firm in Des Moines, IA before moving in-house to be Chief Patent Counsel and General Counsel of an LED lightening company in Minneapolis, MN. As Chief Patent Counsel, Mr. Hoffmann gained extensive experience in patent portfolio management, licensing and patent valuation. Mr. Hoffmann continued his career at a large Minneapolis boutique firm before joining The Small Patent Law Group.

Mr. Hoffmann has extensive experience preparing and prosecuting applications directed toward control systems and computer implemented technologies, medical devices, LED lighting circuitry and controls, engines, computer chip packaging and manufacturing, radio receiver circuitry, agricultural machines, meat processing and filtration equipment, hydraulics, and mechanical joysticks.

Mr. Hoffmann has prepared and prosecuted applications for Fortune 500 TM companies receiving favorable ratings and scores from company assessments.

In addition to patent preparation and prosecution, his practice areas also include patentability assessments, invalidity opinions, PCT and foreign patent prosecution, product clearances and trademark preparation and prosecution.

Mr. Hoffmann is registered to practice before the U.S. Patent and Trademark Office

EDUCATION

Bradley University, B.S., Engineering Physics, 2000
Drake Law School, J.D. (with Honors), 2003

Mary D. Lawlor / Patent Agent

Mary Lawlor focuses her practice primarily on the preparation and prosecution of U.S. patent applications in the mechanical and electrical arts.  She also performs due diligence related to intellectual property-based transactions and portfolio management.

While obtaining her B.S. in Mechanical Engineering from Marquette University, Mrs. Lawlor worked as an engineering Co-Op for an automotive company in Milwaukee, WI.  Upon graduation, she worked as an engineer with an electronic manufacturing company in St. Louis, MO focusing on electromagnetic interference solutions.  While working in St. Louis, Mrs. Lawlor managed global customer programs for leaders in the Consumer, Medical, and IT/Telecom markets.  She worked with global operational teams to manage project milestones from new program development through mass production launch.

Mrs. Lawlor is registered to practice before the U.S. Patent and Trademark Office.

Activities: United States Patent and Trademark Office

Education: Marquette University (B.S. Mechanical Engineering 2009)

Anita Lemke / Patent Agent

Anita Lemke focuses her practice primarily on the preparation and prosecution of U.S. patent applications in the mechanical and electrical arts. She also has experience prosecuting applications in a number of non-U.S. patent offices.

Ms. Lemke has worked with a wide variety of technologies including medical devices, monitoring systems, semiconductor fabrication, control systems, automated call center processing and applications related to insurance and mobile banking transactions.

Anita Lemke is registered to practice before the U.S. Patent and Trademark Office.

Education

DeVry Institute of Technology (B.S. Electronics Engineering Technology 1990) | Phoenix, AZ