Clayton L. Kuhnell
Partner
Clay’s practice focuses on intellectual property and technology law, with a particular emphasis on protecting and enforcing patents, trademarks, copyrights and trade secrets before U.S. federal courts, the International Trade Commission, and the U.S. Patent and Trademark Office. He helps companies and innovators make intelligent decisions about their intellectual property rights — from securing and valuing IP rights, to IP due diligence reviews/audits, to enforcement and IP litigation. Clay represents clients in a broad range of industries and technologies, including consumer products, automotive, pharmaceutical, medical device, welding technology, telecommunications, and software. Clay also serves as an adjunct professor at the University of Cincinnati College of Law offering a seminar addressing methods of securing and protecting intellectual property rights. Clay is listed in Chambers USA: America’s Leading Lawyers for Business, was named to the Ohio Super Lawyers Rising Stars and The Best Lawyers in America® lists, as well as rated AV Preeminent® by Martindale-Hubbell®, its highest available rating for legal ability and professional ethics.
Education & Admissions
Education
- University of Cincinnati
(B.S., Chemical Engineering, magna cum laude, 1998)
- University of Cincinnati College of Law
(J.D., cum laude, 2001)
Admissions
- State of Ohio
- U.S. District Court, Northern District of Ohio
- U.S. District Court, Southern District of Ohio
- U.S. Court of Appeals, Federal Circuit
- U.S. Patent and Trademark Office
Experience
REPRESENTATIVE EXPERIENCE
- Counsels individual and corporate clients as to securement, ownership, licensing, avoidance of infringement, dispute resolution, and enforcement of intellectual property rights.
- Prepared and prosecuted hundreds of patent applications before the U.S. Patent and Trademark Office involving a variety of technologies, including polymer and chemical arts, consumer products, automotive, pharmaceutical, medical device, welding technology, telecommunications, and software. Also coordinated filing and prosecution of international patent applications.
- Appeared before federal courts and before the International Trade Commission for multiple clients to address patent infringement matters, with particular focus on claim construction strategy, Markman briefings and proceedings, and expert witness preparation.
- Provide oral and written patentability, freedom to operate, non-infringement, and validity opinions.
- Negotiate complex technical transactions involving IP rights, including license, distribution, data privacy, development, confidentiality, and settlement agreements.
- Engineering work experience includes process development related to production of specialty chemicals.
- Involved in a transaction with an Asian sovereign wealth fund seeking to make its first investment in the United States.
Publications & Presentations
Publications
- “Bringing Intellectual Property Issues Into the Boardroom,” NYSE Governance Services Corporate Board Member (June 2013)
Presentations
- “Board Challenge: Oversight of Intellectual Property Risks,” Corporate Board Member at NYSE (April 2013)
Involvement
PROFESSIONAL AFFILIATIONS
- American Intellectual Property Law Association
- Cincinnati Intellectual Property Law Association
- Cincinnati Bar Association
- Ohio State Bar Association
- Intellectual Property Owners Association (IPO) (current member of Green Technology Subcommittee and past member of International IP Law & Practice Division Subcommittee)
COMMUNITY INVOLVEMENT
- University of Cincinnati College of Law (Adjunct Professor, Intellectual Property Practice, 2008-present)
FIRM INVOLVEMENT
- Security Advisory Board
Honors
HONORS
- Ranked as one of Ohio’s “Leaders in Their Field” in Intellectual Property by Chambers USA: America’s Leading Lawyers for Business (2015-2021)
- Named to The Best Lawyers in America, Patent Law (2016-2022)
- AV Preeminent Peer Review Rated – Martindale-Hubbell
- Named to the Ohio Super Lawyers Rising Stars list (2010; 2011; 2013-2015)
