Education

J.D., George Washington University Law School

B.S., University of Maryland

Bar and Court Admissions

District of Columbia Bar

Supreme Court of the United States

U.S. Court of Appeals for the Federal and District of Columbia Circuits

U.S. District Court for the District of Columbia

U.S. Patent and Trademark Office

Jeffrey D. Karceski

Consulting Counsel

Practice Areas

Jeff serves as consulting counsel to Wiley Rein LLP. He has more than 25 years of experience in domestic and foreign patent prosecution, opinions, product clearances, mergers and acquisitions, due diligence assessments, patent litigation, appellate practice, portfolio management, intellectual property strategy (patents, trademarks, and copyrights), training, teaching, and law firm management.

Representative Experience

  • Assists with global IP portfolio strategy, and interfaces with in-house counsel and engineers.
  • Prosecutes patent applications, utility, and design.
  • Participates in and conducts post-grant procedures.
  • Manages domestic and foreign patent portfolios in cooperation with foreign associates.
  • Drafts and negotiates patent, trademark, and copyright license agreements and settlements.
  • Assists with patent infringement actions in federal courts, takes and defends depositions, drafts motions, and conducts arguments.
  • Drafts freedom to operate analyses and noninfringement/invalidity opinions, prepares patentability landscape assessments, writes summaries/opinions associated with product clearances, crafts freedom to operate opinions, and assists with IP aspects associated with mergers and acquisitions.

Professional Experience

  • Adjunct Professor, Georgetown University (1994-Present)

Affiliations

  • Advisory Board Chairperson, Professional Studies Program, Georgetown University
  • Director, Washington, DC Chapter of Tau Beta Pi, National Engineering Society