Gavin J. O’Keefe

Overview

Gavin J. O’Keefe is the current managing partner of McDonnell Boehnen Hulbert & Berghoff LLP and serves as a member of the firm’s Management Board.  He also helps lead the firm’s Prosecution Advisory Committee, which oversees and advises the firm on prosecution-related procedures and best practices.

Mr. O’Keefe has extensive experience drafting and prosecuting patent applications in various technical fields, with a specialty in the area of computer hardware and software. He serves a diverse group of clients and works with foreign associates throughout the world to assist clients in building and maintaining global patent portfolios.

Many of these clients rely on Mr. O’Keefe to manage their large-scale patent portfolios.  He currently oversees and serves as the primary outside counsel contact for multiple large portfolios, totaling over 1,000 pending applications and issued patents.  He is also routinely asked by clients to prosecute especially important patent applications, such as those in families that are the subject of patent infringement lawsuits. He has also argued and won multiple appeals (with and without oral hearings) before the Patent Trial and Appeal Board (PTAB).

As part of his patent practice, Mr. O’Keefe has also helped clients establish an effective process for incentivizing employee submissions of invention disclosures, and for identifying patent-eligible subject matter. To help with this process, he has become familiar with his clients’ products and services, and has led dozens of invention harvesting sessions with engineers and other inventors. He also regularly attends the annual and internationally renowned Consumer Electronics Show (CES) to keep up with new products and services and emerging technologies.

Mr. O’Keefe also has experience in securing and enforcing trademark rights, both domestic and international, and has represented clients in trademark cancellation and opposition proceedings before the U.S. Trademark Trial and Appeal Board (TTAB) and other trademark tribunals throughout the world.

In addition, Mr. O’Keefe has represented clients in arbitration and litigation proceedings involving actions such as patent, trademark, and copyright infringement, and has drafted and negotiated licenses and other settlement agreements to achieve effective dispute resolutions for his clients. He has also provided legal opinions on a variety of intellectual property matters that enable his clients to make informed decisions and better manage their risk.

Before joining MBHB, Mr. O’Keefe worked as a software developer for one of the world’s largest telecommunication companies.

Education
  • J.D., Chicago-Kent College of Law,

    with honors

  • B.S., University of Dayton,

    Computer Information Systems, with honors

Bar Admissions
  • Illinois
  • U.S. Patent & Trademark Office
Memberships
  • American Intellectual Property Law Association (AIPLA)
  • Chicago-Kent College of Law
    • Adjunct Professor, Strategies in Intellectual Property Law (2012-present)
  • Intellectual Property Law Association of Chicago (IPLAC)
    • Committee Chair (2012, 2013)
    • Committee Vice-Chair (2010, 2011)
  • Licensing Executives Society (LES)

Experience

Mr. O’Keefe has experience with many different types of computer hardware and software-related technologies, including for example:

  • Autonomous vehicles
  • Cellular and other wireless-based communication systems
  • Database design and optimization
  • Electronic gaming machines
  • Graphical user interfaces (GUIs)
  • Head-mountable displays (HMDs) and augmented reality
  • Automatic content recognition (ACR)
  • Media-presentation devices (e.g., televisions and set-top boxes)
  • Media-production and broadcasting systems
  • Mobile devices, operating systems, and apps
  • Networking, data communication, and cloud-computing
  • Speech recognition and text-to-speech (TTS) conversion
  • Unmanned aerial vehicles (UAVs)