Ryan Schermerhorn is a registered patent attorney who helps clients in all stages of patent prosecution. His engineering background provides him with an understanding of clients’ technologies and enables him to effectively and efficiently provide a range of patent procurement services. Mr. Schermerhorn also leverages his experience to assist on intellectual property litigation as well as develop strategies for acquiring and protecting intellectual property.
Mr. Schermerhorn has drafted and prosecuted both U.S. and foreign patent applications for diverse technologies, prepared non-infringement and “freedom to operate” opinions, and advised clients on optimal patent filing strategies. He has experience drafting and prosecuting applications directed to diverse technologies including:
- Medical devices
- Process control valves, regulators, and related equipment and systems
- Construction equipment, heavy machinery, paving machines and asphalt manufacturing
- Manufacturing equipment technology
- Spacecraft orientation and navigation control systems
- Diverse array of consumer products, such as shelving and storage systems, child care products, and beverage containers
- Dental instruments
- Gravity-feed shelving
- Bottling systems
- Lighting devices for commercial and industrial purposes
- HVAC systems
- Digital image processing
- Mapping related software applications
- Mobile applications
- Health care equipment such as catheters and ostomy products
- Injection molding machines and processes
Background and Credentials
Mr. Schermerhorn is experienced in preparing and prosecuting domestic and foreign patent applications in mechanical, electrical, medical, e-commerce, and business method arts. He has counseled clients on patentability, freedom to operate and patent invalidity and has reviewed and interpreted licensing and joint research agreements.
Prior to joining Marshall, Gerstein & Borun LLP, Mr. Schermerhorn worked as an intellectual property attorney for clients in a variety of industries, including mobile applications and operating systems, navigational routing algorithms and applications, medical imaging devices, critical care products, child safety products, and other consumer products.
Mr. Schermerhorn received his J.D., cum laude, from DePaul University College of Law, where he also received a Certificate in Patent Law. While in law school, Mr. Schermerhorn was a member and editor of the DePaul Journal of Art, Technology, & Intellectual Property, was president of the DePaul chapter of the Phi Alpha Delta legal fraternity, and received the Allen J. Hoover Memorial Award and Patent Resources Group’s Future Leaders Scholarship. Additionally, he holds a B.S. in general engineering, with honors, from the University of Illinois at Urbana-Champaign.
- DePaul University College of Law (J.D.)
- University of Illinois, Urbana-Champaign (B.S.)
- General Engineering
- U.S. Patent and Trademark Office
Publications and Presentations
- “Introduction to Options for Challenging U.S. Patents, Contributory Infringement, Prior Use, and Infringement by Importation,” September 2016.
- “Means Plus Function Claims: Still Valuable?” CLE Presentation, February 2014.
- “Hot News: The 'Hot-News' Doctrine is Hot Again! Or is it?” Engage: The Journal of the Federalist Society's Practice Groups, Winter 2011.
- “Broadcom v. Qualcomm,” DePaul Journal of Art, Technology & Intellectual Property, Fall 2008.
Community and Professional Involvement
- Board Member, Alumni Advisory Board for Department of Industrial & Enterprise Systems Engineering at the University of Illinois Urbana-Champaign, October 2016–Present
- Vice-Chair, IPLAC Young Members Committee, May 2016–Present
- Executive Board Member, Chicago Alumni Chapter of Phi Alpha Delta, January 2014–Present
- Program Chair, Richard Linn Inn of Court
- Member, American Bar Association, American Intellectual Property Law Association, Illinois State Bar Association
- Member, ABA Committee charged with drafting problem for Giles Rich Moot Court Competition, Fall 2011, 2012, 2013 and 2014
- Mentor, Chicago Intellectual Property Alliance (CIPA) Mentorship Program, 2014
- Editor, Business Casual (Published by the American Intellectual Property Law Association), Summer 2012–Present