Dennis Carleton

As principal at KDW with nearly three decades of experience, Dennis Carleton brings a blend of legal and engineering expertise to his practice. This dual background allows him to speak the language of an innovator while guiding clients through thecomplexities of intellectual property law. With an astute eye and understanding of cutting-edge technology, Dennis identifies existing IP roadblocks and assists clients in designing strategies to remove these barriers—often avoiding costly litigation.

 

Dennis dedicated a significant portion of his practice to fighting on behalf of innovative clients whose patents have been rejected, and boasts a 95% percent success rate in overcoming Section 101 rejections.

Role/Title

  • Principal

Education

  • Carnegie-Mellon University, BS Electrical Engineering, 1983
  • Carnegie Mellon University, MS Software Engineering, 1991
  • University of Pittsburgh, JD, 1996

Admissions

  • Pennsylvania
  • U.S. Court of Appeals
  • U.S. District Court

Practice Areas

  • Patent Drafting & Prosecution
  • Trademarks
  • Infringement & Right-to-use Opinions

Industries

  • Education and Research
  • Heavy Industry & Robotics
  • Medical Devices
  • Artificial Intelligence & Machine Learning
  • Hardware & Electronic Devices
  • Software Technologies & Computer Services

Notable Legal Expertise

  • Design-around analyses
  • License, development, confidentiality, and non-disclosure agreements
  • Employment and contractor agreements
  • Extensive experience in a wide range of industries, drafting and prosecuting patent applications in electrical, software, and mechanical areas including the following sectors

Representative Technological Expertise

  • Robotics and automation
  • Medical devices
  • Facial recognition and identification
  • Artificial Intelligence and machine learning
  • Cyber security and trusted computing
  • Business methods (incl. electronic and internet commerce methods)
  • High-speed communications
  • Mathematical algorithms
  • GPS systems, hydraulics, power electronics, and material sciences
Prior to becoming a lawyer, Dennis worked as a software engineer, specializing in diagnostic and medical software. After completing law school, he served in the intellectual property department of several large general practice firms before finding a home at KDW.

Experience

  • Fox Rothschild, LLP, Partner, 2006–2017
  • Buchanan Ingersoll, PC, Senior Associate, 1998–2006
  • Thorp, Reed & Armstrong, Associate, 1996–1998
  • Anesthesia Recording, Inc., Director of Application Development & Team Manager, 1992–1993
  • Digital Equipment Corporation, Senior Software Engineer, 1983–1992
  • Pittsburgh Supercomputing Center, Director of Research Program, 1988–1990

Professional Memberships

  • American Bar Association
  • Intellectual Property Section, ABA
  • American Intellectual Property Law Association
  • Pittsburgh Intellectual Property Association
  • Institute of Electrical and Electronic Engineers
  • Association for Computing Machinery
  • Engineer’s Society of Western Pennsylvania

Contributed Content

  • Federal Circuit Court Denies Patent for “Too Abstract” Risk Management Process
  • South-Side’s WeatherWise In Decade-Long Dispute Over Patenting “Processes”

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