Lyle Kimms, Esq.
(Mechanical/Electro-Mechanical/Optics/Semiconductors)

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Mr. Kimms received a Bachelor of Mechanical Engineering degree from Manhattan College, (Riverdale, NY) in 1984, and a Juris Doctor form Georgetown University Law Center (Washington, DC) in 1990.

Mr. Kimms served as a Patent Examiner with the United States Patent & Trademark Office (1984-1990) after completing his engineering degree. After receiving his law degree, Mr. Kimms was employed by the firm of Pennie & Edmonds as an associate (1990-1995) prior to becoming an associate with the firm of Foley & Lardner (1995-2000), where he subsequently became a partner (2000-2002). Thereafter, Mr. Kimms founded the law practice of PatQuest, PLC (2002-2004) and served of counsel to the firm of Rossi & Associates prior to becoming a founding partner of the firm of Rossi, Kimms & McDowell LLP.

Mr. Kimms has extensive experience in patent procurement practice, including extracting and analyzing invention disclosures from scientists and engineers, developing key patent strategy with the leaders of companies, writing U.S. patent applications, including redrafting of foreign origin applications to comply with U.S. patent practice. Mr. Kimms' areas of prosecution ranges widely from electro-mechanical, electrical, mechanical, computer-driven technologies, semiconductors, optical devices, fiber optic devices, power plants, energy harvesting systems, medical instruments/devices, consumer products, marine propulsion systems, acoustic instruments, business models, and automotive industry, in particular continuously variable transmissions, engine and emission controls, and chassis design.

Mr. Kimms also has experience in international patent procurement practice, including drafting, prosecuting, and managing patent applications filed outside the U.S. Mr. Kimms’ other expertise includes drafting infringement and validity opinions, and right-to-use and due-diligence reports. Mr. Kimms also assisted litigation teams in various patent and trademark infringement cases filed in the Eastern District Court of Virginia. Mr. Kimms has also taught attorneys and scientists how to draft patent claims in preparation for the Patent Bar, and trained attorneys on an on-going basis on how to prosecute patent applications, interpret claims, develop strategies, and handling complex patent applications.

Mr. Kimms is currently a member of the Virginia Bar and the District of Columbia Bar, and is admitted to practice in the U.S. Court of Appeals for the Federal Circuit, the U.S. District Court for the Eastern District of Virginia, and the Supreme Court of Virginia, and is registered to practice before the United States Patent & Trademark Office as a Registered Patent Attorney.

 
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