John S. Harmon, PhD

Overview

John Harmon’s practice includes worldwide intellectual property counseling including patent prosecution, product clearance analysis, diligence, agreements, licensing, and general intellectual property counseling.

John represents clients in industry and academia ranging from venture-backed start-ups to large corporations and academic institutions in a wide range of technologies related to the mechanical, materials, and chemistry fields. John’s strong technical skills combined with his deep knowledge of patent law and industry allows him to align client business goals with specific IP strategies crafted to meet those goals.

Representative technologies that John has dealt with include medical devices, microfluidics, micro and macroencapsulation systems for biologic compounds and cells, additive manufacturing, optics and fluorescent-based sensing and imaging systems, ultrasonic based sensing systems, sports and consumer products, active suspension systems, autonomous vehicles and systems, robotics, machine learning (robotic controls, sensing, and materials), polymer processing, metallurgy, solid state materials, battery systems and materials, and renewable energy systems.

Prior to joining Wolf Greenfield, John was a consultant with a focus on batteries, medical devices, consumer products, and general materials issues. During his graduate studies at the California Institute of Technology, John conducted research in materials processing and characterization of metallic glasses and composite materials.

Experience

• For an additive manufacturing client, worked in tandem with their multidisciplinary design teams to identify the new design concepts included in their latest manufacturing system and implemented a holistic international IP strategy to appropriately protect their business from both direct in country competitors and importation of products in both the US and ex-US jurisdictions that were of commercial relevance for the client. 
• Assisted multiple institutions and private companies with how to appropriately capture inventions related to machine learning in various fields including: materials development, predictions of complex material properties; robotic path planning; vision based identification for robotics controls; identification and remediation of manufacturing defects; and personalized consumer product operation to name a few.
• Routinely assist clients with material transfer, joint development, licensing, non-disclosure, and other IP related agreements.  This has included: negotiating complex interrelated multi-party agreements with multiple national labs, universities, and private companies related to a complex large scale pilot study; negotiating the IP terms related to clients engaging with large multinational corporations; and licensing of foundational IP from academic institutions.
• For a pharmaceutical client, performed in depth diligence studies, including patentability and clearance studies, to support the acquisition of a groundbreaking biological therapeutic system that was acquired by the client for nine figures. Has since then helped to mine the existing portfolio to craft claims to cover the new commercial product envisioned by the client and prepared patent applications to cover the new technology developed by the acquired company in a way that covers the envisioned commercial product.
• A client in the medical device field was developing a new surgical instrument in a litigious field. Interfaced with the design team regularly and supported the design process with landscape and clearance analyses that guided the final design of the device to avoid potential infringement issues.  

Activities

John is actively involved in the entrepreneurial scene in Boston. He serves as a volunteer board member for The eForum (formerly the MIT Enterprise Forum). The eForum is dedicated to providing coaching and mentoring programs for entrepreneurs and showcases emerging tech to inspire innovation. John also volunteers with Cybernetix Ventures and FORGE.

Recognition

• Recognized on the Best Lawyers: Ones to Watch list by The Best Lawyers in America®
• Repeatedly named to the list of Massachusetts Rising Stars by Super Lawyers
• Ranked among the top 5% of most active patent prosecutors—out of 28,843 patent attorneys and agents—in Patexia’s Patent Prosecution Intelligence Report