Kim IP

Michael Cornelison

Senior Counsel

Michael Cornelison has more than 30 years of progressive experience in intellectual property law, focusing on the evaluation, acquisition, licensing, and enforcement of intellectual property rights across e-commerce and Internet technologies, as well as patents, trademarks, copyrights, and trade secrets. Specializing in both domestic and international patent procurement in the electrical, mechanical, computer, communications, and business method fields, he has secured several hundred U.S. and foreign patents for clients ranging from individuals and universities to corporations of all sizes, including multiple Global and U.S. Fortune 500 companies.

In addition to his patent, trademark, and copyright prosecution practice, Michael advises clients on assessing, protecting, and commercializing their intellectual property assets. He provides strategic guidance and subject matter expertise in litigation involving the assertion and defense of patent, trademark, copyright, and trade secret rights. He has also authored comprehensive legal opinions addressing patentability, trademark registrability, infringement, and validity issues. Furthermore, Michael has extensive experience in intellectual property commercialization, including negotiating and drafting licensing, transfer, confidentiality, and non-competition agreements.

After several years working as a software and electrical engineer, Michael began his legal career as a United States Patent Examiner, where he examined and granted patents in the semiconductor and electromagnetic arts. During his tenure, he gained invaluable insight into the patent prosecution process in both the United States and abroad. Leveraging this unique “insider” perspective, he has built a distinguished career as a dedicated client advocate across all areas of intellectual property law, including patents, trademarks, copyrights, and trade secrets.

REPRESENTATIVE MATTERS:
  • Salvaged valuable patent coverage from patent applications narrowly drafted by prior counsel for papermaking company, including providing advice and negotiation for seven figure sale of the covered invention.
  • Represented mechanical and RF communications company in all aspects of intellectual property, including patent procurement, post grant reviews, right-to-use studies, litigation, and general counseling regarding patents and trademarks.
  • Procured patents for a U.S. Fortune 100 (and Global Fortune 500) printing and image forming company.
ARTICLES & PRESENTATIONS:
  • Speaker, Legal Issues in University Research, Florida Atlantic University (January 2020)
  • Author and Speaker, New USPTO Guidelines on Computer Implemented Inventions, PRINT4FAB Conference, Society for Imaging Science and Technology (September, 2019)
  • Speaker, Ten Common Misconceptions about IP That Can Harm Your Business, Montgomery County PA Chamber of Commerce (March 2019)
  • Speaker, Patentable Subject Matter under 35 U.S.C. §101, Philadelphia Chamber of Commerce (May, 2018)
  • Speaker, Inter Partes Review – When and When Not to Use, Philadelphia Chamber of Commerce (October, 2014)
  • Author, Supreme Court Confirms That Transforming Abstract Idea into a Patent-Eligible Invention Requires More Than Mere Recitation in Claims of Generic Computer, CRBCP blog article (June 24, 2014)
  • Speaker, Recent cases in Patent Law, PBI (April, 2006)
SERVICES:

Patent Procurement

Trademark Procurement

Opinion Work

ADMISSIONS:

Pennsylvania

U.S. District Court, E.D.Pa

U.S. Patent &Trademark Office

EDUCATION:

J.D., George Mason University School of Law

B.S., Electrical Engineering, Johns Hopkins University