Tim Engling Email & Phone Number

Sarasota, Fl, Us

- Serve select clients with practical corporate, legal, and business solutions, including agreements (start-up, joint development, and licensing), trademark, and patent protection (including U.S. Patents 10,413,773 and 9,856,617)- Advise emerging companies on founder agreements, formation, equity plans, funding strategies, collaborations, and transactions- Establish an IP holding company to grow prospective affiliated businesses having valuable patent rights- Assist with capital raise for holding company rolling up several technologies

Columbus, Ohio Metropolitan Area

• Provide legal and business support to startups, including counsel, funding, formation, and patent/trademark applications.• Assist subsidiary Nulu, Inc. in launching an innovative patent pending knife -now on Kickstarter.

Wisconsin, United States

As Associate General Counsel, provided comprehensive legal and business guidance across various legal matters, including intellectual property, licensing, contracts, privacy, IT, development, and marketing.- Reviewed and negotiated hundreds of successful IT contracts, covering e-commerce, diverse products/services, and major vendors- Drafted and negotiated multi-million dollar licensing and collaboration agreements to advance key business initiatives- Analyzed development disclosures, collaborated with inventors, and evaluated innovative aspects- Initiated, prepared, and filed Lands' End's first utility patent application in more than 20 years, lauded as a pivotal innovation at VP/Directors meeting - Updated IP docket, handled registration renewals, and analyzed and filed four new U.S. trademark applications for new branding initiatives- Successfully shut down an unauthorized app and prevented further infringement by retail vendor- Analyzed exclusivity and other terms for product and print manufacturing agreements- Revised and monitored data and privacy policies, templates, and activities to ensure compliance with U.S and EU/UK GDPR law

Monroe, Wisconsin

In a two-attorney team, collaborated closely with the GC and executives to guide and implement complex strategies spanning business transactions, intellectual property, and corporate matters. Shaped strategic action plans to propel the company with $1B annual revenue, with 20 diverse affiliates including e-commerce, catalog, healthcare, food, aviation, consumer credit, marketing, IT, and data center, to achieve business goals and vision. - Reduced lawsuits from five complex patent and copyright cases in 2015-16 with millions at risk, settled some at no cost, and decreased infringement cases to zero- Led cross-functional projects in product development, IT, and SaaS to achieve company goals by successfully negotiating and executing dozens of multi-million dollar contracts and licenses, reducing costs by millions- Protected portfolios of over 100 trademark assets, via searches, clearance opinions, use opinions, filings, renewals, watches, and oppositions- Won a trademark enforcement lawsuit for a key brand through appeal, overcame USPTO rejections to applications, and obtained 20 new registrations- Resolved million-dollar dispute efficiently with foreign vendor with minimal company costs and return of goods- Advised on the innovative Lift and Shift strategy, transforming business systems and processes from Cobol/CICS legacy code to leading-edge cloud systems and SaaS technologies- Analyzed legal, compliance, and risk factors- Oversaw legal issues, key transactions, and daily concerns - Drove strategy for intellectual property, development, and technology- Educated teams on strategy, IP, compliance, risk management, dispute avoidance, and R&D- Supervised outside counsel regarding litigation and special projects- Managed multidisciplinary projects focused on product development, IT, and technology- Shaped and improved templates and policies to streamline operations- Provided options and implemented creative solutions to solve legal and compliance issues

Greater Chicago Area

Handled general corporate matters, legal support, business strategy, marketing, contracts, dispute resolution, and patent and trademark strategies, as well as M&A, VC, and strategic alliances. Transitioned to firm client - Colony Brands, Inc.Business- Counseled on corporate, transactional, and intellectual property legal and business issues- Supported transactional and corporate matters, including private equity, VC, licensing, joint development agreements, strategic alliances, merger and acquisitions, and financing- Managed projects encompassing tech-based transactions, corporate matters, and governmental and regulatory submissions-Drafted, negotiated, and completed diverse commercial agreements, such as purchase agreements, software and SaaS licenses, consulting agreements, NDAs, development contracts, assignments, licenses, and collaboration agreements (e.g., medical devices, consumer products, automotive, software, and systems)- Prepared budgeting information and responded to requests for proposalsM&A / Venture Capital-Spearheaded complex restructurings, joint ventures, collaborations, and M&As- Coordinated legal and due diligence, structured and implemented actions to support strategic investment opportunities- Co-led Venture Best sponsoring the Chicago Arch Angels and mentored at Bunker Labs, analyzing and evaluating investments in growing companies and providing services for investors and companiesIntellectual Property- Prepared, prosecuted, analyzed, and enforced various patent, trademark, and copyright rights- Strategized protection, maintenance, and enforcement of IP rights- Resolved disputes to avoid litigation and guide favorable settlements- Managed IP assets and programs efficiently, including alternate fee arrangements

Greater Chicago Area

Steered dynamic corporate, legal, and business strategies with Corporate and IP Teams as a business attorney focused on aspects of corporate, transactions, business analysis, patent, trademark, copyright, trade secret, competition counseling, litigation avoidance, as well as procuring, managing, evaluating, and enforcing IP rights for a competitive advantage.Led a high-performing team of three attorneys and intraoffice staff in executing exceptional legal, transactional, and IP operations.Corporate/Business/Transactional- Collaborated with business leaders and teams on strategic planning and policies- Managed M&A for Fortune 500 and small companies from diligence to post-close activities- Facilitated restructurings, joint ventures, collaborations, and sales, including cross-border deals- Planned, budgeted, supervised, and implemented cross-area projects and business strategies- Negotiated purchase, license, IP, development, and collaboration agreementsIntellectual Property- Prepared, prosecuted, and analyzed patent, trademark, and copyright applications globally- Conducted and supervised patentability, validity, infringement, state of art, and clearance analysis, and prepared opinions for development and transactions- Managed, audited, and analyzed patent and trademark programs and IP litigation to develop, maintain, and enforce rights- Guided engineering and marketing teams to develop and protect devices, designs, and brands- Counseled companies on licensing standard essential patents in automotive and medical device industriesTechnologies included medical devices, software, apps, consumer goods, vehicle components, aviation, packaging, processes, manufacturing, defense items, systems, and green technology Sample U.S. Patents prosecuted: 8666595, 8608224, 8491032, 8465080, 8360502, 8303034, 8220968, 8172301, 7984822, 7967364, 7963426, 7938086, 7878701, 7866725, 7842195, 7748678, 7726720, 7708420, D691406, D641926, and D634379

Greater Chicago Area

As an equity partner in the IP Group, prepared and prosecuted numerous patent, trademark, copyright, and domain name applications as the youngest partner at the firm. - Managed intellectual property aspects of M&A and development agreements, including licensing and negotiating- Conducted patentability, validity, infringement, and trademark clearance searches and provided related opinions- Counseled on patent invalidity and infringement avoidance during product design- Engaged in litigation to enforce rights and defend claims of infringement, including a bench trial seeking invalidation of a patent and a jury trial for design patent, obtained injunctions, took and defended depositions, conducted discovery, prepared and argued motions, settled lawsuits, and prosecuted and resolved oppositions- Resolved numerous disputes involving internet, domain names, copyrights, trademarks, and patents- Managed and audited patent and trademark portfolios of hundreds of assets for large companies- Facilitated the transition of IP portfolios in-house for large corporate clientsPrepared and prosecuted numerous patent, trademark and copyright applications. Sample U.S. Patents written and prosecuted: 6127024, 6379835, 6386118, 6624569, 6639355, 6666609, 6807911, 6828504, 7022406, 7024824, 7059006, 7104524, 7300222, 7337997, 7464797, D529365, D536835, D577251, D577955, D588880, and D605244.

Trained and led a platoon of 50 soldiers in combat including unit’s rapid deployment force; staffed and equipped 13 airstrips for use in the Gulf War; supervised development, readiness, and operation of seven control tower teams, two radar teams, and two communication sections to execute complex and mission-critical aviation operations, including combat air traffic controllers in the busiest control tower in the world, during Desert StormIntelligence Officer and Pilot, Michigan National Guard 1992 - 1993Combat Platoon Leader, Air Traffic Control Unit 1989 - 1991Student, Aviation Officer Basic and Flight School 1988 - 1989Commercial Pilot License, Aviation Qualified, Air Assault Qualified, Airborne Qualified, Scuba Rated

Bs, Interdisciplinary

Jd, Law

Llm, Intellectual Property