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Derek  Roller, Nutter McClennen & Fish LLP Photo

Derek Roller

Associate / Boston

Overview

Derek Roller is an associate in Nutter’s Intellectual Property Department who has a wide range of experience spanning both patent prosecution and contested proceedings. Clients rely on Derek to help them navigate through patent and trademark application preparation and prosecution, as well as more specialized procedures, such as inter partes review, reexamination, and litigation. Derek is also well-versed in a variety of other IP projects, including strategic portfolio planning, preparing opinions on patent infringement and validity, as well as conducting freedom to operate and inventorship studies.

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Derek’s experience encompasses a wide variety of technology areas, including:

  • medical and surgical devices and methods
  • electronic components
  • imaging technologies
  • process control and automation systems
  • power regulation and delivery systems
  • computer hardware and software
  • solar technology
  • wireless communications technology

Drawing on his background in mechanical and manufacturing engineering, Derek has a broad base of technical knowledge, as well as practical experience in the information technology space, and relishes working with cutting-edge technologies in any field. Like his colleagues in Nutter’s strategically focused Intellectual Property Department, Derek thinks critically about the role of patents, trademarks, copyrights, and other intellectual property in connection with a client’s business goals. Counseling clients includes thinking strategically and being mindful of the viewpoints of competitors, investors, customers, and other interested parties when considering any intellectual property assets.

Notable Experience and Client Impact

  • Prepare and implement intellectual property strategic plans for early stage companies that identify key areas of innovation, develop a roadmap of patent applications to cover those innovations, establish procedures to identify and protect future innovations, as well as lay out a plan for monitoring competitor activity and clearing commercial products for market release. Such plans, as well as the intellectual property assets that are produced, have been recognized value creators for companies, increasing their attractiveness to investors and partners.
  • Coordinate portfolio management and patent prosecution in the U.S. and abroad.
  • Represent clients in inter partes review proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board.
  • Represent clients in district court litigation regarding patent infringement.
  • Prepare opinions on patent infringement and validity.
  • Represent clients in mediation and other alternative dispute resolution proceedings.
  • Perform intellectual property diligence analysis associated with a variety of corporate transactions, including acquisitions, licensing, and other partnerships.

Derek is a regular author and editor of Nutter’s IP Law Bulletin blog, which highlights important topics in the field of intellectual property, usually with a view toward strategic and/or practical tips that can be gleaned from recent decisions or events.

Derek continues his leadership outside the firm through his involvement in several bar associations, including:

  • Boston Bar Association, member
  • Boston Patent Law Association, member and Pro Bono Committee co-chair for 2017
  • American Intellectual Property Law Association, member

Committed to the firm’s pro bono efforts, Derek’s pro bono experience includes representation of an illegally detained alien in connection with the Political Asylum/Immigration Representation Project (PAIR) and representation of a non-profit organization in a concurrent use proceeding in front of the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board. A collegiate rower, Derek also serves as a director for a Chicago-area non-profit devoted to promoting the sport of rowing.

Derek is a graduate of Northwestern University’s McCormick School of Engineering and Applied Science as well as Boston College Law School.

Experience

Experience

  • CIRCOR International, Inc.

    Acquisition of Critical Flow Solutions
    $210 million

News & Insights

Publications

Blog Posts

Honors

Honors

  • Massachusetts Super Lawyers Rising Stars, 2013-2016

Education & Admissions

Education

Boston College Law School, J.D., Alumni Scholar

Northwestern University, B.S., Mechanical Engineering

Northwestern University, B.S., Manufacturing and Design Engineering

Admissions

  • Massachusetts
  • U.S. Patent and Trademark Office
  • U.S. District Court for the District of Massachusetts

Industry Expertise

Drawing on his background in mechanical and manufacturing engineering, Derek has a broad base of technical knowledge, as well as practical experience in the information technology space, and relishes working with cutting-edge technologies in any field.

Noteworthy

Massachusetts Super Lawyers Rising Stars, 2013-2016