How Duane Helps Clients
Duane integrates complex science and legal matters at a high level. He specializes in explaining complex intellectual property law concepts in a way that is accessible. Duane is the co-chair of the firm’s Chemical Practice Group.
Duane focuses on patent prosecution, portfolio management and litigation; trademark procurement and portfolio management; and analysis and due diligence for transactions including intellectual property (IP). He also has experience with copyright and trade secret law.
His patent practice includes preparation and prosecution of domestic and foreign utility and design patents in the pharmaceuticals, fragrance, home products and biotechnology fields. Duane has obtained multiple foreign and domestic patents in industrial water purification. He has significant experience managing international patent portfolios, having made and managed filings in more than 30 jurisdictions. He has taken an active role in priority determinations in patent interferences and has participated in litigations involving allegations of patent infringement and copyright infringement. Duane’s particular patent focus is on use of PCT filings to obtain wide territorial coverage while satisfying the applicant’s business goals.
Duane’s trademark practice includes all phases of procurement and enforcement, including knockout searches, clearance opinions, watches, filings and oppositions. He has supervised foreign trademark filing both directly and through the Madrid Protocol, and he has filed foreign-origin applications in the United States.
Duane is a shareholder in the firm’s Intellectual Property Section and co-chair of its Chemical Practice Group. Before joining Buchanan, served for two years as a judicial law clerk with the Honorable David A. Katz of the United States District Court for the Northern District of Ohio in Toledo, Ohio.
What Clients Can Expect
Duane addresses client's IP issues with effective strategy and pragmatic advice. He keeps the client's business goals top of mind and makes sure that clients know that their matters have his attention.
Outside the Office
When he's not at work, Duane enjoys spending time with his wife and their two children. One of his favorite activities is family game night. Duane enjoys many different board games but especially “Eurogames,” which emphasize strategy and tactics over luck.
For the client, every legal question is also a business question.
- The Best Lawyers in America 2018-2019, Litigation - Intellectual Property
- Managing Intellectual Property, Patent Star (2014-2017), Trademark Star (2016-2017), IP Star (2014-2018).
- IAM Patent 1000 (2018 and 2016).
- Pennsylvania Super Lawyers® Rising Stars list (2013).
- BTI Client Service All-Star (2011).
- Former adjunct lecturer at the West Virginia University College of Law.
- Provided CLE programs as a lecturer for the Pennsylvania Bar Institute.
- Prepared and prosecuted provisional, utility and PCT patent applications in the bioproducts, pharmaceuticals, energy, water purification, building supplies, aroma and beauty fields for universities and for businesses ranging in size from startup companies to Fortune 500 companies.
- Prepared freedom to operate opinions for corporations in the pharmaceutical, biotechnology, fragrance and beauty industries.
- Participated in patent litigation and interference proceedings in the medical, personal care, automotive and consumer products industries.
- Prepared and evaluated confidentiality and licensing agreements.
- Managed trademark portfolios in the bath, bedding, fashion and energy industries.
- Procured and managed the trademark portfolio of an Internet social networking and e-commerce website ranked in the top 1000 websites worldwide by traffic.
- Policed unauthorized use of client intellectual property through DMCA takedown requests, cease and desist letters and UDRP actions.
- Resolved trademark oppositions and threatened oppositions through coexistence agreements and sale-and-license-back agreements.
- Coordinated trademark filing and prosecution worldwide, with multiple filings in all continents but Antarctica.
- Reviewed and evaluated intellectual property estates prior to acquisition of those estates, followed by management of the international assignment process after acquisition.
Ohio Northern University College of Law, J.D., 2000, high distinction; Law Review
Harvard College, A.B., 1995, cum laude, Chemistry
- United States Patent and Trademark Office
- U.S. District Court for the Western District of Pennsylvania
- U.S. District Court for the Northern District of Ohio
- U.S. Court of Appeals for the Sixth Circuit
- U.S. Court of Appeals for the Federal Circuit
Federal Circuit Bar Association
American Chemical Society
Pittsburgh Intellectual Property Law Association
Allegheny County Bar Association
Former adjunct lecturer, West Virginia University College of Law
Treasurer, Q. Todd Dickinson IP Chapter of the American Inns of Court
American Intellectual Property Law Association
Intellectual Property Owners Association
Pittsburgh Leadership Development Initiative Class XX, member
Western Pennsylvania Chapter of the American Liver Foundation, former board member
Harvard Club of Western Pennsylvania, member