Overview

As a former structural engineer, Steve Kelly helps clients understand the nuances of intellectual property protection by explaining the abstract principles of IP law in practical and relatable terms.

Steve is the practice leader of the firm’s Intellectual Property Group. His practice offers a full range of intellectual property law, including obtaining and enforcing patent, copyright, and trademark rights, and handling related matters in unfair competition, e-commerce, licensing, due diligence, and IP transactions.

Steve’s vast experience includes:

  • Patent Applications – preparing, filing, and prosecuting applications for a wide range of medical devices, electro-mechanical devices, consumer products, computer and software technology, and business methods;
  • Patent Searches and Clearance – performing freedom to operate and clearance searches, drafting novelty opinions, and preparing infringement opinions for medical, mechanical, and electrical devices, consumer products, toys, and software related technology;
  • Trademark Applications – preparing, filing, and prosecuting federal and state trademark applications and conducting strategic consultations with clients regarding trademark protection and enforcement matters;
  • Litigation – enforcing and defending against federal claims of infringement of patent, trademark, and copyright rights, and represented clients in trademark opposition proceedings before the Trademark Trial and Appeal Board;
  • SaaS, IT, and Software Technology – negotiating and drafting commercial agreements for software, cloud, and IT systems;
  • Licensing – negotiating and drafting license and consulting agreements for patent, trademark, copyright, and trade secret rights; and
  • Mergers, Acquisitions, and Private Equity – performing IP evaluations and due diligence for intellectual property assets in corporate transactions.

Prior to attending law school, Steve was a structural engineer for URS Corporation, an international engineering company with more than 130 offices worldwide. During his time at URS Corporation, Steve gained extensive experience in the analysis and design of complex structural systems. His experience included dynamic and finite element modeling, and linear, non-linear, seismic, and wind analysis techniques. He was the lead structural dynamics engineer for the design of the Pearl Harbor Memorial Bridge in Connecticut, a $500M extradosed cable-stay bridge, and the first of its kind in the United States. 

Outside of the office, Steve can be found enjoying Tampa’s wide variety of cultural and outdoor activities, from the beaches and golf courses, to music festivals and museums.

Honors

  • Florida Super Lawyers Rising Star (2010-2016): Intellectual Property

Credentials & Experience

Education

Johns Hopkins University, B.S. Civil Engineering, 1998

  • Gerard H. Schlimm Award, 1998
  • Class of 1929 Memorial Scholarship, 1997
  • John D. Bruck Memorial Scholarship, 1997
  • Johns Hopkins University Provost Research Award, 1997

Johns Hopkins University, Master of Civil Engineering, 1999

University of Florida College of Law, J.D., 2006

  • Florida Law Review: Student Works Editor, 2005-2006

Bar Admissions

American Bar Association

The Florida Bar

Hillsborough County Bar Association

U.S. Patent and Trademark Office

Experience

  • Represented a publicly traded automotive retailer in its acquisition of a regional dealer for $735M, of which $685M was allocated to goodwill.
  • Represented a university professor in negotiating patent rights related to a technology transfer subsidiary of a national institution for cancer research. 
  • Represent multiple medical device manufacturers in securing, maintaining, and enforcing patent rights.
  • Represent a publicly traded insurance company in securing, maintaining, and enforcing trademark rights. 
  • Performed patent clearance and opinion work for medical device, energy, and construction clients. 
  • Represent a fuel injection remanufacturer in securing, maintaining, and monetizing patent assets. 
  • Represented a regional bank in negotiating rights to core processing software. 
  • Represented a public automotive dealer in negotiating rights to an enterprise management platform.
  • Represented an international digital communications provider in negotiating favorable terms for an enterprise management software platform. 
  • Represented an independent renewable energy service provider in negotiating rights to power plant management software.
  • Represent an international provider of metrology equipment in licensing patent rights.
  • Represent several restaurant operators and food service providers in securing and maintaining trademark rights. 
  • Represent a precision agriculture company in securing and maintaining trademark rights. 
  • Represented a cold-chain logistics company in licensing patent assets.
  • Represented a construction component manufacturer in securing and maintaining patent rights. 
  • Represented a provider of radio-controlled flying toys in securing and maintaining patent rights. 

Professional & Civic

Community & Professional

  • American Intellectual Property Law Association, Member
  • Association of Corporate Growth: Orlando Chapter, 2015-Present, Northeast Florida Chapter, 2011-2013, Tampa Bay Chapter, 2016-present
  • Leadership Orlando, Class 89
  • KYN Start Up Accelerator, Jacksonville Florida, Mentor
  • LawReviewCLE, CLE Presenter, Intellectual Property Basics

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