Laura Grebe

Partner
Laura Grebe, SmithAmundsen LLC Photo

Overview

For Laura (She/Her), intellectual property is a business asset and every client should see a return. Sometimes clients expect a direct return by exploiting an IP asset itself, such as selling a patented product or increasing sales through brand recognition. Sometimes clients look for an indirect return through licensing programs, or by increasing portfolio value when posturing for sale of business assets. However it happens, Laura has spent more than a decade helping clients reach their end game to see that return.

Since grade school Laura has known two things: that she wants to be a lawyer and she loves science. Being a patent attorney satisfies both passions. Today she assists clients with obtaining, maintaining and exploiting patent and trademark rights, all with the view that IP needs to work for the client. She manages global patent and trademark portfolios for large international clients, as well as small businesses, and advises on overall intellectual property protection strategies. She enjoys leading clients through different scenarios to reach their goals and teaching about the mechanics and value of intellectual property.

Laura’s clients work in a variety of industries. She counsels clients in the biomedical technology field on inventions regarding orthopedic implants, surgical instruments, prostheses, ophthalmic diagnostic devices, dressings and beauty products, among others. In the field of chemical technologies she assists clients with developments that include polymers/ polymeric compositions, flame retardants, catalyst systems, cable insulation, films/barrier films, nano-layer films, micro-layer films, coatings, packaging and specialty chemicals. Laura represents clients in the mechanical and electrical technologies industry regarding fuel injection and transmission systems, scaffolding and work platform systems, propulsion systems, bathymetric mapping systems, satellite telemetry, imaging devices, electronic bartering systems, consumer goods, optics and safety devices.

Laura previously prepared and prosecuted patent applications on behalf of the National Aeronautics and Space Administration (NASA), Naval Undersea Warfare Center (NUWC), Naval Surface Warfare Center Dahlgren Division (NSWCDD) and the National Institute of Standards and Technology (NIST). Laura also worked with the U.S. Army Corps of Engineers in managing their international trademark portfolio. She has counseled the Securities Exchange Commission (SEC) with respect to various trademark registrations and assisted the SEC in updating their trademark licensing policies and managing their licenses with third parties. Laura uses her experience obtaining and operating under these government contracts to help clients review STTR/SBIR contracts and navigate rights allocation under these small business arrangements.

For a period following the Supreme Court Ruling in Alice Corp. v. CLS Bank International, the USPTO’s guidance regarding subject matter eligibility was in flux. Laura worked with clients during this time to navigate the unknown. A number of clients’ patent applications received new rejections, with the USPTO asserting the subject matter was not eligible for patent protection based on the new Alice ruling.  When discussions with the specific examiners revealed they were unsure how to proceed with the new rejections, Laura had the opportunity to conduct interviews with the USPTO’s “Alice expert” and ultimately reach a resolution.

Outside the office, Laura is a Girl Scout troop leader for her daughter’s troop. A Girl Scout herself since 1991, Laura enjoys helping girls identify and explore their passions, grow in confidence and use their skills to make the world a better place. In addition, she is a baker, a PADI-certified advanced open water diver, a published author, a musician and a runner. She uses knowledge from all of these activities in her practice, whether she is writing a patent application for a SCUBA-related technology or navigating the politics of government contracting in revising agreements.

Experience

Membership & Involvement

  • Wisconsin Intellectual Property Law Association: Member 2017 - Present; President, 2020 – 2021;  VP/President-Elect 2019-2020, Treasurer 2018-2019; Program Chair 2017-2018
  • UPAF Ride for the Arts Steering Committee: Member, 2018 – 2019; Entertainment Chair, 2017 -2018
  • Volunteer: Girl Scout Troop Leader, 2020 - Present

Resources & Insights

Education

Marquette University Law School, J.D., magna cum laude

Marquette University, B.S.

Admissions

  • Wisconsin
  • U.S. Patent and Trademark Office
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