John F. Kane is a patent attorney at Gearhart Law with more than two decades of experience advising multinational corporations and innovative businesses on complex intellectual property matters, with particular depth in the chemical, pharmaceutical, polymer, and materials science industries. Before joining Gearhart Law, John built his practice at WilmerHale and Thompson Hine LLP, developing global IP strategies, managing extensive patent portfolios, and leading patent prosecution across the United States and abroad
John’s path to patent law began in an engineering and research department, where he saw firsthand how innovation, intellectual property, and business decisions intersect. While working alongside patent attorneys on IP matters, John secured his own patent, U.S. Patent No. 5,197,765 for a “Varying Tone Securing Document”. Going through this process sparked what would later become his career, and gave him a vantage point that few patent attorneys have: before he had ever prosecuted a patent for someone else, he had already been the inventor on the other side of the table.
Over more than two decades at Thompson Hine LLP, and WilmerHale, John has counseled clients on patentability, freedom to practice, and patent invalidity. He has developed and prosecuted patent applications across specialty chemicals, polymers, films, paper, adhesives, and pharmaceuticals, then negotiated the license agreements that covered these types of intellectual property. His work has also included Hatch-Waxman Act counseling, due diligence on the IP involved in corporate transactions, and supporting litigation matters involving trade secret misappropriation.
Clients consistently point to his ability to take complex patent matters and explain them in a way that’s easy to understand, something he treats as central to how he practices. His approach is straightforward: timely responses, clear advice, and guidance built around each client’s specific objectives and situation.
One of the moments John is most proud of came after a client’s patent application, tied to an important product, had been repeatedly rejected by the Patent Office. He built a new argument that turned the application around and secured allowance, which is exactly the kind of persistence he brings to matters that hit a wall.
Outside the office, John spends his time with family, staying active in various sports, and enjoying the outdoors.
Areas of Expertise
- IP Portfolio Management
- Patent Prosecution (Domestic & Foreign)
- Cross-Border IP Strategy
- Technical Patent Drafting
- Patent Litigation Strategy & Support
- Due Diligence
- Complex Negotiations
- Client Counseling & Strategic Advising
- License Agreements
Experience
- Represents clients on complex intellectual property matters, including patentability and strategy, IP portfolio management, and license agreement negotiations
- Supports multinational clients securing effective, cost-efficient IP protection through PCT and foreign patent application preparation and prosecution
- Provides specialized expertise in highly technical areas, including pharmaceuticals, chemicals, polymers, films, paper, and adhesives
- Conducts due diligence on intellectual property involved in corporate transactions
- Trains internal and external stakeholders on patent prosecution best practices
- Counseled clients on freedom to practice, patent invalidity, and patent liability; conducted due diligence analysis; and devised and implemented IP protection strategies
- Developed and prosecuted patent applications across specialty chemicals, polymers, films, paper, and adhesives
- Drafted and negotiated license agreements relating to all types of intellectual property
- Advised clients on issues arising under the Hatch-Waxman Act
- Prepared state-of-the-art reports for clients, particularly on pharmaceutical compositions
- Secured multiple patents for corporate clients’ key inventions, applying a chemistry background to complete and file applications
- Partnered with clients and attorneys on litigation matters involving trade secret misappropriation
- Analyzes competitors’ patent portfolios to help clients understand their competitive landscape
Education
- J.D., magna cum laude, University of Dayton School of Law, Dayton, OH
- B.S., Biology and Chemistry, summa cum laude, Wright State University, Fairborn, OH
Professional Associations
- Ohio State Bar
- Dayton Intellectual Property Law Association
- Dayton Bar Association
Presentations & Academic Engagements
- Adjunct Professor of Law (former), University of Dayton School of Law
- “The Effect of Numerical Ranges Under Jeneric/Pentron, Inc. v. Dillon Co.,” Presenter
- Best Practices in Patent Prosecution, CLE-Accredited Seminar, Presenter
Awards
- Thomson Reuters Stand-Out Lawyer (2024, 2025)
- Ohio Super Lawyers, Rising Stars (2007)
Patents
- U.S. Patent No. 5,197,765, “Varying Tone Securing Document”