Gerrit C. Winkel

As an intellectual property lawyer handling preparation and prosecution of patent applications, Gerrit Winkel advises clients in industries including biochemistry, biotechnology, and material sciences. His work for clients includes drafting and prosecuting through all phases of domestic and international patent prosecution, including restriction practice, office action responses, appeal practice, interview practices, and petitions.

Areas of specific experience include:

  • Completion of third-party submissions, invalidity and infringement analyses, and preparation of corresponding opinions.
  • Creation, protection, and management of client portfolios through strategic planning, international filings, continuation applications, and freedom-to-operate, patentability, and landscape searches.
  • Working closely with inventors and in-house counsel to identify viable intellectual property and guiding inventor disclosures.
  • Coordination of work and building relationships with foreign agents.
  • Performing intellectual property audits to inform business decisions on acquisitions, asset purchase, and joint development agreements.
  • Providing training on a range of intellectual property issues and procedures to clients, staff, clerks, and attorneys.
  • Cooperating with litigation counsel in enforcement and defense of clients’ patents.
  • Managing cost-estimates, billing, and invoicing.

With a science-based background in materials science, engineering, economics and chemistry, Gerrit understands his clients’ businesses. His education allowed him to concentrate on research focused on transition-metal catalysis and catalyst design, as well as small molecule bond activation reactions and organic transformations. He collaborated with the Center for Catalytic Hydrocarbon Functionalization. Gerrit also assisted his undergraduate research group with developing and utilizing quantum-chemistry methods. These methods were used to discover mechanisms, reactivity principles, and selectivity for experimentally important chemical reactions related to catalysis, energy, and organic synthesis.

While attending George Washington University Law School, Gerrit completed a legal internship with the American Petroleum Institute, where he developed familiarity with the oil and gas industry, as well as U.S. administrative and regulatory law.

Experience

U.S. and International Patent Prosecution

Pharmaceutical, Chemical, Biotechnology, and Life Sciences

Biochemistry

Fuel Cell Catalysis

Chemical Compositions

Organometallics

Material Sciences

Education & Admissions

Education

M.S., Materials Science and Engineering, University of Utah 2016

J.D., George Washington Law School, 2015

B.A., Economics and Chemistry, Brigham Young University, 2012

Admissions

Virginia State Bar

Utah State Bar

Languages

Spanish

Insights & Events

USPTO Inventorship Guidelines for AI-Assisted Inventions Mar 20, 2024

President Biden issued the “Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence” on October 30, 2023, including the objective to “promote a fair, open, and competitive ecosystem and marketplace… read more

Primer for Patenting Methods of Treatment Apr 07, 2022

Under ideal circumstances an applicant generally tries to obtain a patent that claims the underlying invention as a substantive and definitive object or composition. In doing so, the claims extend protection from the invention itself… read more

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