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Safet Metjahic, a partner in Ice Miller’s Intellectual Property Practice Group, is a skilled advisor and practitioner who delivers innovative legal solutions to clients ranging from technology start-ups to industry leaders, including established Fortune 100 companies. He routinely advises and guides clients in bet-the-company matters and in navigating, managing and mitigating intellectual property (IP) and commercial technology-related risks and opportunities. He applies lessons learned from his many years of litigation experience in private practice and more than 16 years of service at the U.S. Patent and Trademark Office (USPTO) as a patent examiner, master-level primary examiner and supervisory patent examiner in multiple industry sectors.

Safet focuses his practice on working with clients at all stages of the business cycle to develop, protect, manage, commercialize and, when needed, enforce or defend intellectual property rights. His practice includes developing filing strategies and drafting, prosecuting, enforcing and defending intellectual property assets (including patents, copyrights, trademarks and trade secrets) in a wide range of industries and technologies. Safet performs patent infringement, validity and enforceability investigations as part of investment, acquisition, venture and technology clearance studies. He also performs due diligence investigations of IP assets to evaluate and assess intellectual property protection and defense postures and how best to leverage or monetize intellectual property assets.

Safet is experienced in negotiating and preparing commercial agreements involving complex technologies and supply/delivery chains. He routinely negotiates and drafts a wide range of technology-related agreements, including licensing, collaboration, joint-development, partnership, purchase/sale, manufacturing, services and complex supply chain agreements.

Prior to entering private practice, Safet accrued more than 16 years of experience at the USPTO, including ten years as a supervisory patent examiner, where he trained and supervised patent examiners in a variety of technologies. Safet was the examiner on 2,777 granted U.S. patents, covering classes of technologies such as measuring & testing (Classes 73 and 324), television (Class 348), image projectors and lithography (Class 353), optics (Classes 356 and 359), facsimile and static presentation processing (Class 358), multiplex communications (Class 370), pulse or digital communication (Class 375), telephonic communications (Class 379), cryptography (Class 380), telecommunications (Class 455), and data processing (Class 707), among others. During his tenure, he also trained and led teams of patent examiners in the handling of all aspects of post-grant reexamination.
Reported and Representative Cases
  • Trudell Medical International v. PARI Respiratory Equipment, Inc., et al., (Nebulizer Devices)
  • WIAV Solutions LLC v. PALM, Inc., et al. (Cellular Telephone Devices)
  • Illinois Tool Works Inc. d/b/a CFC International Corp. v. Waytek Corp. (Laminate Products and Processes therefor)
  • Siemens Medical Solutions USA, Inc. v. EP MedSystems, Inc. (Ultrasound Catheters)
  • Disa Industries A/S v. Thyssenkrupp Waupaca, Inc. (Sand Molding Machines)
  • Enpat, Inc. v. Siemens Energy & Automation, Inc., (Active Front End Controller for AC-DC Conversion)
Representative Transactions
  • Freedom to Operate, Validity, Infringement and Enforceability Studies and Opinions in: aircraft systems and technologies; automotive components; building structures and components; business methods; camera systems and technologies; catheter systems and technologies; computer display technologies; computer input/output devices and technologies; database and file management systems; endoscope systems; gaming systems and technologies; graphic user interface systems and methodologies; medical systems and devices; microprocessor technologies; oil and gas systems and methodologies; telecommunications; television; unmanned aerial vehicle (UAV) launchers; unmanned vehicles (including aerial, land and sea); waste management systems and methodologies.
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