Frederick A. Spaeth

Partner

Frederick A. Spaeth has more than twenty years experience serving clients in the area of intellectual property law, including preparing and prosecuting patent, trademark and copyright applications in the U.S. and abroad, and rendering opinions on validity and infringement. He provides counseling in connection with the formation of R&D-based joint ventures, intellectual property licensing, patent landscape studies and a variety of commercial transactions and agreements including consulting contracts, direct sales and consignment sales, SELA and SaaS agreements. Fred has worked closely with in-house general counsel and intellectual property managers, and his experience spans a wide range of industries. He also has experience assisting in various aspects of intellectual property litigation. With an educational background that includes a BS degree in Chemistry, study in engineering, a JD degree and an MBA, Mr. Spaeth is well prepared to address a diverse range of legal, technological and business issues.

Publications

  • “Incorporation by Reference in U.S. Patent Applications – Lingering Issues,” Intellectual Property Today, May 2010
  • “FACEBOOK Trademarks: Will ICANN follow FACEBOOK’s lead in protecting trademarks?” Intellectual Pursuits (A Publication of The Michaud-Duffy Group), August 2009
  • “Bilski Update: Business Method Patents on Review by Supreme Court,” Intellectual Pursuits, August 2009
  • “Google’s AdWords Program Faces Major Court Challenge on Trademark Use,” Intellectual Pursuits, June 2009
  • “Supreme Court Watch: Scope of Patent Licenses Defined,” Intellectual Pursuits, April 2009
  • “Changes at U.S. Patent Office Put on Hold,” New England In-House (A Publication of Lawyer’s Weekly, www.newenglandinhouse.com), November 2007
  • “USPTO Procedural Changes Will Likely Increase Costs Of Patent Process,” New England In-House, June 4, 2007
  • “‘Equivalents Thereof’ v. The Doctrine of Equivalents In The Interpretation Of U.S. Patent Claims,” 20 Quinnipiac Law Review 487 (No. 3, Winter 2001)
  • “Genetic Engineering Research: An analysis of the Government’s Role In Regulation,” 7 University of Bridgeport Law Review 71 (No. 1, 1986)

Areas of Experience

Fred’s areas of experience include counseling in intellectual property management and development; analysis of prior art, patent landscape and state-of-the art reports; conducting intellectual property transactional due diligence; drafting agreements for protection, licensing and exploitation of patents, trademarks, copyrights, and trade secrets; rendering patentability, freedom-to-operate, and validity opinions; advising clients regarding trademark and copyright “fair use”; proceedings before the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences and Trademark Trials and Appeal Board. He has served clients in industry sectors including food technology, gas and fluidized bed phase catalysis, medical devices, aerospace stage separation technology, oil and gas mining and exploration, optical fiber systems, chemical vapor deposition, music technology, business methods, step motors, paper sheet handling devices, and munitions, calling on facility in chemistry, electronics, and general mechanical devices.

Accomplishments
  • Provided Freedom-to-Operate studies that have been the basis of major client investments
  • Developed IP awareness and best practices manual and presentation for corporate client
  • Authored legal publication cited to U.S. Supreme Court in major patent case
  • Participated in developing high-level intellectual property strategy for chemical industry start-up
  • Served at Editorial level and established publication clearance practices for a national nonprofit sports organization
Frederick can be reached at fspaeth@dilworthip.com

Admitted

1986, Connecticut; registered to practice before U.S. Patent and Trademark Office

Education

1987, University Of Bridgeport, M.B.A.
1986 Quinnipiac University School Of Law, J.D.
1981 University Of Connecticut, B.S., Chemistry

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