Clifton E. McCann
Clif is a registered patent attorney and litigator with over 30 years of experience. He helps clients obtain, enforce, and leverage patent and trademark rights and defend against infringement challenges. He litigates patent disputes in the federal courts, the International Trade Commission, and the USPTO’s Patent Trial and Appeal Board. He litigates trademarks in the federal courts and the USPTO's Trademark Trial and Appeal Board.
Clif’s accomplishments and qualifications include:
- Lead trial and appellate counsel in series of patent infringement cases for Ecolochem, Inc., resulting in favorable precedent-setting Federal Circuit decisions.
- Represented Fortune 500 life sciences company in one of the first Post-Grant Review (PGR) proceedings before the Patent Trial and Appeal Board.
- Manager of a National Institutes of Health patent portfolio of over 500 chemistry and biotech applications, counseled on tech transfer.
- Prosecuted patents in chemical engineering (water treatment) that withstood challenges in U.S. district courts and appeals up to the U.S. Supreme Court.
- Protects, enforces, and licenses trademarks worldwide, including the famous MENSA trademark.
- Lead patent trial counsel in International Trade Commission 337 patent infringement actions and related civil actions.
- Chaired the ABA's Intellectual Property Litigation Committee and the Patent, Trademark & Copyright Section of the Bar Association of Washington, DC.
- Has prosecuted, licensed, and litigated patents for alloys, autoimmune disease treatment, banking and business methods, catalysis, caulks and sealants, chemical manufacture, coatings, consumer products, data extraction, data streaming, diagnostics, e-cigarettes, encryption, filtration, fire prevention, green technology, hand and power tools, hardware, laboratory equipment, LEDs, lubricants, measurement and detection instruments, medical devices, metrology, microorganism recovery, mixing equipment, office machines, oil and gas, packaging, pharmaceuticals, plastics, power generation, semiconductors, shipping containers, software, storm water treatment, TENS devices, and water and wastewater treatment.
- Has prosecuted hundreds of trademark applications, licensed and litigated trademark rights, and manages trademark portfolios. Has registered hundreds of copyrights, managed copyright portfolios, and litigated copyright validity and infringement.
- Counsels clients on all aspects of intellectual property and the advantages, disadvantages, and interrelatedness of all forms of intellectual property, including patents, trade secrets, design patents, trademarks, trade dress, and copyrights. Provides opinions on intellectual property availability, validity, freedom to operate, and infringement.
- “Patenting During the Pandemic,” Thompson Hine COVID-19 Update, April 2020
- Co-author, "The U.S. Supreme Court’s Helsinn Decision Makes Six Years of U.S. Patents Vulnerable to “On Sale” Prior Art," In House Defense Quarterly, Summer 2019
- “Inventors Beware: Even Secret Activity Can Sink Your Patent,” Thompson Hine Intellectual Property Update, January 2019
- “Preparing for the Next Generation of Actively Managed ETFs,” Thompson Hine ETF Reg Insights, January 2019
- "Medical Device Marketing Under Substantial Equivalence – FDA Clearance and USPTO Patent Consideration,” Regulatory Focus, Regulatory Affairs Professional Society, September 2018
- “Supreme Court Decisions Bring Needed Certainty to PTAB Challenge Process,” Thompson Hine Intellectual Property Update, April 2018
- “Trump Administration Moves Against Chinese IP Violations,” Thompson Hine International Trade & Intellectual Property Update, August 2017
- “PTAB Challenges Can Reduce Royalty Obligations, Open New Markets,” Thompson Hine Intellectual Property Update, March 2016
- “Patent Owner’s Considerations For Review Proceedings at the Patent Trial and Appeal Board (PTAB) Concurrent with Litigation,” IPO White Paper, IPO Law Journal, July 15, 2015 (co-author)
- "Hague Agreement Enhances Benefits Of US Design Patents," Law360, May 15, 2015
- "Dollars and Sense: A Water Technology Owner's Guide to Transferring Intellectual Property," Ultrapure Water Journal, August 26, 2014
- "IP Audits: What are they? Why are they important? What do they cost?", Corporate Compliance Insights, July 15, 2013
- "Obtaining, Challenging and Enforcing Pharmaceutical Patents Under the America Invents Act," Pharmaceutical Patent Analyst, September 2012
- "America Invents Act of 2011: Major Changes in the Law that Will Affect Patent Litigation Strategies," IP Frontline, October 2011
- "ETFs and Alts: What's Around the Corner?," Thompson Hine Investment Management Conference, New York, NY, September 2019
- "Protection of Proprietary Technology throughout the Supply Chain: Patents and Trade Secrets,” GlobalChem 2015, Baltimore, MD, March 2015
- “Water Projects: Hot Topics in Finance & Innovation," 2014 Sustainable Manufacturer & Water 2.0 Conference, Northern Illinois University, Chicago, IL, May 2014
- "Intellectual Property Audits: The Purpose, Importance, and Cost," National Meeting of the American Chemical Society, March 2014
- "Dispute Avoidance and Resolution After the America Invents Act," National Meeting of the American Chemical Society, August 2012
- "America Invents Act of 2011: How You Can Use It to Your Company's Advantage," International Water Conference, November 2011
- "Effective Use of Patents to Raise Capital and Protect R&D," Annual Water Innovations Alliance Conference, September 2011
- IP Star, Patents, Washington, D.C., Managing Intellectual Property survey, 2012-2021
- IP Star, Trademarks, Washington, D.C., Managing Intellectual Property survey, 2012-2021
- Selected for inclusion in Washington, D.C. Super Lawyers, 2012-2020
- Chairman's Award for protecting MENSA trademark, American Mensa, 2010
- AV® "Preeminent" Rating by Martindale-Hubbell 1986-2020
- Bar Association of the District of Columbia (past chair, IP Law Section)
- Bar Association of D.C. Foundation (member, board of trustees);
- American Bar Association (past chair of Committee 601, Federal IP Litigation, and Patent Claim Interpretation Subcommittee)
- Intellectual Property Owners Association (member, PTAB Practice Committee)
- American Intellectual Property Law Association
- Patent Lawyers Club of Washington
August 11, 2020
April 17, 2020
August 01, 2019
Eight Thompson Hine Lawyers Recognized by Washington, D.C. Super Lawyers Thompson Hine LLP
May 13, 2019
September 01, 2018
Thompson Hine’s IP Practice Recognized by WTR 1000 and IP Stars Thompson Hine LLP
May 21, 2018