As a member of the Firm's Intellectual Property Department, Josh helps companies and innovators make intelligent decisions about their intellectual property rights and protect the ultimate value of their business - from IP prosecution to IP audits/due diligence for acquisitions, divestitures and licensing to enforcement and IP litigation. Josh's work spans a variety of industries and technologies, including chemical/materials, electrical engineering and computer arts. Josh also has unique experience in licensing matters, negotiating hundreds of technology agreements for multiple clients, including dozens of Research Agreements with Universities.
Josh's experience in IP law has led to exciting work, including being entrusted to handle a variety of IP matters for clients such as Corning, LexisNexis and Toyota. In fact, Josh is currently serving as Acting Patent Counsel for LexisNexis, a global provider of workflow and business solutions. In his role as "in-house counsel," Josh is able to get a unique perspective of the IP challenges faced by multi-national corporations, which has served to enhance his practice and quality of service to clients.
Additionally, Josh is now the practice group chair for Dinsmore's IP Enforcement and Licensing Practice Group, where he'll manage the firm's service in IP litigation, trademark, copyright, privacy and social media matters. Since joining Dinsmore, Josh has been the driver behind the growth of the firm's IP practice, which has grown from 15 attorneys a decade ago to nearly 50 today. Through aggressive recruiting and focused mentoring, Josh has increased the number of attorneys by bringing in partner and associate laterals from local, regional and national firms that strengthen the services offered by Dinsmore.
Early in his career, Josh served for Michael R. Merz, Magistrate for the United States District Court for Southern District of Ohio. Today, he helps recruit and mentor the next generation of Dinsmore attorneys and he is a strong advocate for their professional development. Aside from his legal practice, Josh enjoys competitive running, competing in local and regional running events each year.
Josh's knowledge of IP law has led to a variety of speaking engagements over the last year, including focused presentations on the impacts of the recently-passed America Invents Act.
Memberships & Affiliations
· Cincinnati Bar Association, Intellectual Property Litigation Section
· Cincinnati Intellectual Property Law Association
· Ohio State Bar Association
· American Intellectual Property Law Association
· Intellectual Property Owners Association
· Licensing Executives Society
· International Trademark Association
· Cincinnati Area Senior Services, Board of Directors
· United Way Tocqueville Society
· American Heart Association, Heart Ball Executive Leadership Team
Distinctions
· Selected for the Ohio Rising Stars® List
Experience
Supply Chain Research and Development, Confidentiality and Non-Dislosure Agreements in Asia
Public Medical Related Company
Supply chain research and development, confidentiality and non-disclosure agreements in Taiwan, China, Singapore and Asia generally
Patent Preparation and Prosecution; Research and Licensing Agreements
Automotive Manufacturer
Patentability preparation; preparation and prosecution of scores of patent applications related to numerous technologies in IP portfolio; preparation and negotiation of research agreements with universities
Patent Preparation and Prosecution
High Technology Glass Manufacturer
Patentability preparation; preparation and prosecution of scores of patent applications related to numerous technologies in IP portfolio; IP portfolio studies; clearance studies
Trademark Infringement Litigation
Multiple Clients
Trademark infringement litigation
University Advanced Research Agreements
Automotive Manufacturer
University advanced research agreements
Trademark Portfolio Management
Multiple Clients
Trademark portfolio management
Trademark Infringement Litigation
Independently Owned Business
We represented our client's organization in a lawsuit filed against his brother and his brother's company for infringement of a trademark.
OPW Fueling Components/PISCES Underground Piping Patent Litigation and Related Cases
PISCES by OPW, Inc., OPW Fueling Components, Division of Dover Corporation
Patent infringement, breach of contract, licensing
Helping the Cincinnati Reds Protect Their Brand Integrity
Cincinnati Reds
Leveraging extensive trademark experience and a thorough understanding of MLB licensing regulations, Dinsmore attorneys work to support the Reds proactive approach to merchandising, licensing and broadcasting.
Daws Mfg. Co., Inc. v. Dee Zee, Inc.
Dee Zee, Inc.
Defense of patent infringement suit
Patent Infringement Litigation
Beverage Packaging Manufacturer
Patent infringement litigation in a number of venues with amounts at issue in the tens of millions of dollars
Patent Preparation and Prosecution
Legal Publisher
Patentability preparation; preparation and prosecution of scores of domestic and international patent applications related to data and software technologies in IP portfolio; IP portfolio studies; clearance studies
Patent Preparation and Prosecution
Medical Device Manufacturer
Patentability preparation; preparation and prosecution of patent applications related to medical device technologies in IP portfolio; IP portfolio studies; clearance studies
Patent Infringement Litigation
Industrial Machine Manufacturer
Patent infringement litigation in a number of venues with amounts at issue in the tens of millions of dollars
Presentations
August 6, 2010, "Law firms get creative about billing for services," quoted in Cincinnati Business Courier
April 7, 2009, "Intellectual Property boot camp in the Candle World," National Candle Association, New Orleans, Louisiana
November 5, 2003, "Tune Your Radar to IP," Cincinnati Bar Association CLE, Cincinnati, Ohio