John J. Okuley, Ph.D.
- Parent Category: Staff
- Published on Monday, 09 August 2010 20:01
John J. Okuley joined MuellerSmith as a clerk in 2001, and became a principal of the firm in 2009. Dr. Okuley’s practice involves both patent application prosecution and portfolio management as well as leading the firm’s litigation practice. With his broad background in academia and industry, Dr. Okuley has counseled clients in the drafting and prosecution of patents covering technologies ranging from biotechnology, cancer treatment, medical devices, electrosurgery, motors, and modular construction components, to machine tools, luggage and sporting goods. A substantial part of Dr. Okuley’s practice involves protecting intellectual property rights in new business methods. He has been instrumental in assisting small and large companies in developing their intellectual property portfolios.
As part of the firm's litigation practice, Dr. Okuley has served on the litigation team of several patent infringement suits, representing both Plaintiffs and Defendants as Trial Counsel, and Counsel. The patented products in dispute have ranged from Nutraceuticals, to business methods, weightlifting equipment and consumer goods. As part of his representation of clients, Dr. Okuley has served as a technical advisor to cooperating outside law firms, examined the technical staff and experts of counter parties, and served as local counsel.
Dr. Okuley has also litigated several trademark infringement disputes for the firm’s clients as Trial Counsel for both Plaintiffs and Defendants, served as counsel in false advertising litigation between industry leaders in the home appliance industry, and served as Trial Counsel in a theft of trade secrets action involving defecting employees. He has extensively participated in a number of successfully negotiated or mediated settlements limiting the litigation costs relative to damages recovery or damages exposure to the firm’s clients.
Prior to entering the practice of law, John worked as a scientist and teacher. He has a Ph.D. in Molecular Genetics (1991), a Juris Doctor degree (with honors, 2003), and a Bachelor of Science (1984, in Agronomy, with distinction) from The Ohio State University. Dr. Okuley was a college professor for six years, teaching cell biology, plant physiology, genetics, and biotechnology. He also was a postdoctoral researcher at Washington State University and the USDA Forest Service, where his research included work with cell signaling, biochemistry, and transgenics. He is the author of more than a dozen publications and has been listed as an inventor on several patent applications and patents. While at Ohio State's Moritz College of Law, Dr. Okuley was an Associate Editor of the Ohio State Journal on Dispute Resolution and published a paper, Resolution of Inventorship Disputes: Avoiding Litigation Through Early Evaluation. He has a long association with the Boy Scouts of America, currently serving as a troop leader for a local troop. He and his wife have worked for several years with their church’s St. Vincent DePaul Society.
Dr. Okuley is admitted to practice law in Ohio and in the federal courts for the Southern District of Ohio, and the Northern District of Ohio, along with pro hac vice admissions in a number of other federal courts. He is also admitted to practice before the U.S. Patent and Trademark Office.