Biography

Matthew R. Carey is a registered patent attorney who counsels clients in the electrical and software engineering industry as it relates to patenting strategies as well as all stages of domestic and foreign patent prosecution. His engineering background provides him an understanding of clients’ technologies and enables him to effectively and efficiently provide a range of patent procurement services. Matt also leverages his experience to assist on intellectual property litigation as well as develop strategies for acquiring and protecting intellectual property.

Matt was recognized as an “Emerging Lawyer” in the 2015–2017 editions of Emerging Lawyers Magazine, in which individuals are recognized among the top up-and-coming attorneys in Illinois.

Representative Experience

  • Successfully procured patents for a range of clients, from Fortune 500 companies, to start-up ventures, to universities, to independent inventors.
  • Strategized with clients on approaches to build out IP portfolios, including identifying protectable technologies and recommending internal implementations.
  • Performed non-infringement, patentability, validity, and enforceability analyses for clients, and drafted corresponding opinions.
  • Counseled clients on effective ways to maximize patent protection across jurisdictions while minimizing costs.
  • Performed IP due diligence in association with company mergers and acquisitions.

Matt has ably helped clients obtain patent rights in such areas of electrical and software engineering as:

  • Next generation mobile devices
  • Autonomous vehicle operation
  • User experience technology
  • Audio processing and related audio devices
  • Social networking, including front end interfacing and back end technologies
  • Mobile applications and operating systems
  • Digital mapping technologies
  • Process control systems
  • Cloud-based systems and networking
  • Image processing and printing devices
  • Semiconductors
  • Business methods, including various financial models, fleet management, and supply chain optimization techniques
  • Digital media delivery services
  • Gaming machines

Background and Credentials

Prior to joining Marshall, Gerstein & Borun LLP, Matt worked as an intellectual property attorney for a variety of clients from startup companies to Fortune 500 corporations. He also worked for two years as a patent agent for a boutique IP firm. Matt gained technical experience in electrical and computer engineering in prior roles as an analyst for a national IT consulting firm and as a financial derivatives trader. Matt received his J.D. from Chicago-Kent College of Law, where he also completed the Intellectual Property Law Certificate Program. He also holds a B.S. degree in computer engineering from the University of Illinois at Urbana-Champaign.

Education

  • Chicago-Kent College of Law, Illinois Institute of Technology (J.D.)
  • University of Illinois, Urbana-Champaign (B.S.)
    • Computer Engineering

Bar Admissions

  • Illinois
  • U.S. District Court, Northern District of Illinois
  • U.S. Patent and Trademark Office