Zack Cleary

Counsel Norton Rose Fulbright US LLP
Zack Cleary

Zack Cleary

Biography

Zachary Cleary advises global technology leaders and start-ups alike to develop comprehensive, strategy-driven patent portfolios in a variety of technology areas. His creative and thoughtful approach helps clients protect their products with utility patents, design patents, trademarks and trade secrets.

 Zachary prepares and prosecutes provisional, nonprovisional, US national stage and international patent applications of the highest quality to suit his clients’ needs. Using the latest patent/examiner data analytics tools, and guided by 15 years of industry experience, Zachary steers patent applications to allowance while enhancing their value in a cost-effective manner. Zachary has submitted multiple appeal briefs to the USPTO to reverse “abstract idea” rejections and protect his clients’ software products.

 In addition, Zachary’s experience includes consumer devices, medical devices and clinic software, photovoltaic cells, petroleum engineering, audio/acoustic technology, graphic user interfaces, rocket fuel injectors, cash distribution machines, telecommunication networks, power distribution/management systems, smart grid network devices, fiber optic systems, steel-ceramic composite armor for tanks, water filtration systems, artificial intelligence/machine-learning (AI/ML) modeling systems, predictive analytics, e-commerce, tax/insurance technology, large-scale data management, drones, autonomous vehicles, robotics, cranial implants, sternal implants, implantable cardiac devices, spinal stimulation devices, neurological implants, neurostimulation devices, cardiac monitoring technology, remote therapy technology, genetics, dental/orthodontal implants, orthopedic implants, biotech software, medical imaging hardware and software, light sheet fluorescence spectroscopy (LSFM), handheld chemical analysis devices, Internet-of-Things (IoT) devices, fintech, vehicle mounting accessories, furniture and appliances, industrial/aesthetic designs, graphics processing for video games, device/user authentication technology, ultrasonic scanning systems (industrial equipment maintenance, geological modeling), cybersecurity, software developer tools, AR/VR imaging and spatial recognition software, quantum computing, and indoor farming systems. Hundreds of patent portfolios across industries have reached commercial success with Zachary’s guidance.

 Zachary also has experience as an in-house research and test engineer for a telecom equipment manufacturing firm where he designed product tests, performed competitive patent landscape analyses, drafted invention disclosures and managed a large patent portfolio. Today, he leverages this in-house experience with his physics background and passion for technology to develop and monetize forward-looking patent portfolios which secure his clients' competitive advantages.

Professional experience

Representative experience

Representative experience

  • Led the U.S. patent portfolio and trademark portfolio diligence teams for an acquisition of a leading MedTech company by a venture capital firm.
  • Prepared the entire patent portfolio, including dozens of domestic and international patent applications, for an orthopedic implant company which subsequently received $18 million investment from a private equity firm. 
  • Performed M&A diligence for the patent portfolio during acquisition of a major photovoltaic cell manufacturer.
  • Drafted and prosecuted dozens of patents to protect 3GPP fifth-generation (5G) technologies and standards.
  • Developed a large patent portfolio protecting directional microphone arrays for voice-activated Internet-of-Things (IoT) devices.
  • Turned a received cease and desist letter into a successful dual-licensing program between two telecommunication manufacturing firms.
  • Drafted and prosecuted multiple patent applications to protect steel-ceramic composite tank armor, collapsible shelters and other military-related technologies.
  • Drafted and prosecuted dozens of patent applications for a global e-commerce company protecting their cloud computing platform and consumer IoT products.
  • Generated patent landscape reports for competitor analyses and to identify open space for directed patent prosecution strategies.
  • Drafted and prosecuted multiple patent applications protecting smart-grid power distribution technologies.
  • Drafted and filed multiple appeal briefs overturning $101 “abstract idea” rejections at the patent trial and appeals board (PTAB) to successfully protect software technologies.
  • Developed an international portfolio with assets in dozens of countries for a US company acquired by a global technology company.
  • Drafted and filed multiple design patents to protect makeup applicators and compacts for a global packaging design company.
  • Developed valuable patent portfolios in the US and internationally for dozens of startup companies.
  • As an engineer for a telecommunications manufacturing firm, designed, tested and released power distribution products and fiber optic distribution products.

Education

Education

JD, University of Washington School of Law, 2018

BS, Physics, Gonzaga University, 2011

Admissions

Admissions

  • US Patent and Trademark Attorney
  • Washington State Bar

Publications

Publications

  • Cleary, Z. (2023) Designing the Future: Protecting AR/VR Innovations with Design Patents.  New York Law Journal, July 14, 2023.
  • Wei, H., Cleary, Z., Park, S., Senevirathne, K., & Eilers, H. (2010). Fluorescence lifetime modification in Eu: Lu2O3 nanoparticles in the presence of silver nanoparticles. Journal of alloys and compounds, 500(1), 96-101.

Speaking engagements

Speaking engagements

  • Invited Presenter, "Designing the Future: Protecting Aesthetic Innovations in the Metaverse with Design Patents and Trademarks," Celesq, October 4, 2023
  • Invited Presenter, “Intellectual Property Considerations,” University of Texas Southwestern Medical Center – Blackstone LaunchPad Speaker Series, August 17, 2022
  • Invited Presenter, “Enter the Metaverse: How to Protect your IP,” Annual Business Law Institute, Nashville, June 21, 2022

Memberships and activities

Memberships and activities

  • YMCA Camp Reed Advisory Board

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