Intellectual Property Counseling & Protection
Grady J. Frenchick is an attorney at Whyte Hirschboeck Dudek S.C. in the Intellectual Property Practice Group. Mr. Frenchick is a former Senior Patent Counsel with Medtronic, Inc., Minneapolis, Minnesota (medical devices), former Staff Patent Attorney with Economics Laboratory, Inc., St. Paul, Minnesota (specialty cleaners), and a former Patent Attorney with 3M Company. Mr. Frenchick received his law degree from the University of Wisconsin and has been an adjunct professor at the University of Wisconsin School of Law teaching patent law and prosecution law since 1995. Mr. Frenchick also served as an adjunct professor at the University of Minnesota School of Law, teaching patent, trademark and copyright law.
- University of Wisconsin Law School, J.D., 1977
- University of Wisconsin, M.S., Chemistry, 1978
- Lawrence University, B.A., 1972
- State Bar of Wisconsin
- State Bar of Minnesota
- U.S. Supreme Court
- U.S. Court of Appeals for the Federal Circuit
- U.S. Patent & Trademark Office
Awards & Distinctions
- Ranked in Chambers USA - America's Leading Lawyers for Business in Intellectual Property (2008-2012)
- Expert witness - Patent/Trade Secret Interface - BondPro Corporation v. Siemens Westinghouse Power Corp., 2005 U.S. Dist. LEXIS 11903 (W. D. Wis. 2005)
- Extensive experience with adversarial, ex parte prosecution issues including interferences; appeals, including the Court of Appeals for the Federal Circuit; Board of Patent Appeals and Interferences; re examination, re issue; European Patent Office Oppositions.
- Lead in Biointerface technologies; medical devices, iontophoresis, biomaterials, guidewires, ophthalmic lenses and lens materials, coronary and vascular diagnostic and therapeutic technologies; including catheters and stent technology; electrochemistry and all battery-related chemistries and technologies.
- Lead in Biotechnology, particularly research products and related technologies; PCR and related licensing and litigation issues.
- Served as an expert witness: respecting patent and patent law-related issues including infringement, trade secret misappropriations, fees, patent law issues.
- Extensive pre trial litigation experience with several reported decisions.
- American Bar Association
Articles and Presentations
- Hold the Mayo… An Overview of Mayo v. Prometheus, co-authored with WHD attorney Grady Frenchick, WHD Special Report (April 2012)
- Antidote for Medimmune: The Common Law of Contract, Wisconsin Chapter of the Licensing Executives Society (LES) 2009 Annual Meeting (September 29, 2009)
- LG Electronics: Return to the dark days?, Wisconsin Law Journal (November 3, 2008)
- Intellectual Property Strategy and Funding: What Early Stage Companies Need to Know, Panelist, Wisconsin Technology Early Stage Symposium (November 6, 2008)
- Visions of victory: Stem cell patent reexamination revisited, Wisconsin Technology Network (September 19, 2008)
- Collaborative Opportunities Workshop, Moderator, BIO Mid-America Venture Forum (September 26, 2007)
- Patent Reform Efforts in Congress, Panelist, Wisconsin Innovation Network (July 31, 2007)
- Regulatory, IP and Third-Party Payment Issues for Medical Device Entrepreneurs, Wisconsin Technology Council’s 2007 Wisconsin Entrepreneurs’ Conference (June 2007)
- Licensing University IP to Industry: A Simulation with Annotation, Grady J. Frenchick, J.D., M.S. and Jonathan M. Fritz, J.D., M.S., Marquette University (May 2007)
- FAQ: Provisional Patent Applications, Co-author, WHD Spotlight: Intellectual Property Law Newsletter (Spring 2007)
- Anticipate This!, Co-author, WHD Spotlight: Intellectual Property Law Newsletter (Spring 2007)
- The Linguistic Considerations in Trademark Selection: A Comment, Spotlight: Intellectual Property Law Newsletter (Spring 2007)
- WARF Challenges Show Need for Patent Reform, Wisconsin Technology Network (October 2006)
- U.S. Patent Setup Needs Reformation, Wisconsin State Journal (August 2006)