About the Firm

Chiacchio IP LLC is a results-oriented law/intellectual property counseling firm focused solely on helping its clients achieve their intellectual property-related objectives. Chiacchio IP partners with its clients to help them make informed decisions regarding intellectual property-related matters. Chiacchio IP understands the personal (sometimes even emotionally-charged) stake many clients have in the matters that they entrust to the Firm; and how the Firm goes about handling such matters reflects this understanding. 

Chiacchio IP believes that expertise in intellectual property teamed with dedication to client service as reflected by active and intent listening to the client, targeted advice designed to address the client’s concerns and further their goals, responsiveness, and crystal clear communication, is the recipe for achieving the client’s goals and putting the client at ease that their matter is receiving the highest level of attention and care.

Services

The Firm provides all manner of intellectual property-related services. This includes counseling (including preparing formal Opinions of Counsel and less formal counseling), procuring intellectual property protection, preparing, and handling adversarial matters (including enforcement of intellectual property rights and defending against assertion of alleged intellectual property rights; both in the courts and before the U.S. Patent and Trademark Office). The Firm also handles campaigns to monetize clients’ intellectual property. Chiacchio IP has extensive experience preparing, analyzing, and negotiating licenses of intellectual property rights. The Firm also undertakes due diligence investigations/analyses of intellectual property in connection with potential mergers, acquisitions, and other corporate transactions.

More specifically, within the patent space, the services that Chiacchio IP provides include, among others, counseling with respect to patentability, freedom to operate, patent validity, patent infringement, and patent enforceability. The Firm provides formal written Opinions of Counsel addressing such issues as well. Chiacchio IP also undertakes patent landscaping analyses. The Firm also prepares and prosecutes U.S. patent applications. The Firm also handles all aspects of post-grant proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (i.e., IPRs, PGRs, and CBMs). Further with regard to litigation, Founder and Owner Theodore J. Chiacchio (“Ted”) has been integrally involved in five trials of complex civil litigations in federal district court amounting to more than two and a half months of total trial time. Mr. Chiacchio has also handled briefing before the U.S. Court of Appeals for the Federal Circuit and the Seventh Circuit on behalf of his clients. Accordingly, the Firm is well-positioned to handle litigation, whether alone or as an adjunct to other outside counsel and/or in-house counsel.

With regard to trade secret matters, Chiacchio IP has extensive experience analyzing matters involving trade secret misappropriation and related claims such as claims under the federal Computer Fraud and Abuse Act (CFAA). Chiacchio IP regularly prepares cease-and-desist letters, conducts pre-suit investigations and analyses, and handles litigation involving trade secret misappropriation, CFAA, and other related claims. Where a matter involves state law claims, if necessary, Chiacchio IP will involve an attorney with particular expertise in the specific state law issues implicated by a case. (Ted is licensed to practice in New York, New Jersey, before the U.S. Patent and Trademark Office, and in numerous federal courts throughout the U.S.).

With regard to copyright matters, Chiacchio IP’s extensive experience has included serving as lead trial counsel for a major U.S. copyright litigation (which case remains on-going currently). Chiacchio IP also procures U.S. copyright registrations for clients. The Firm also counsels clients regarding authorship, copyright ownership, conduct that may or may not give rise to an implied non-exclusive license of copyright, and other related matters. 

With regard to trademark matters, the Firm has substantial experience handling Opposition proceedings before the Trademark Trial and Appeal Board. Chiacchio IP has also prepared and prosecuted many U.S. trademark applications for clients of the Firm. Chiacchio IP also counsels clients regarding the full range of trademark, trade dress, and other related matters. For example, Chiacchio IP counsels clients regarding the strength or weakness of a mark, priority of use, likelihood of confusion between two marks, dilution of a famous mark, unfair competition, deceptive trade practices, and other related matters. 

Technical Expertise/Experience

The Firm handles matters relating to a wide range of technologies, including the Life Sciences, mechanical, and computer software, among others. The Firm’s technical expertise is particularly deep in the Life Sciences (medical, pharmaceutical, chemistry, biology, biochemistry). Ted earned a bachelor’s degree in Biology from Bucknell University and supplemented this curriculum with courses in Organic Chemistry and Physics. Ted has more than 15 years of experience in law practice where some or all of the matters he was handling concerned the Life Sciences. Ted has spent years representing some of world’s most successful companies, including, for example, GlaxoSmithKline, Unilever, and Mylan Pharmaceuticals. 

Cost-effectiveness

With its modest overhead expenses, Chiacchio IP is in a position to provide cost-effectiveness that large law firms and consulting firms simply cannot (or will not) provide. Critically, however, the quality of service is on-par with (or, in most cases, superior to) that which you will get with any firm. Ted began his career by gaining years of comprehensive training and experience with two top international law firms – Kenyon & Kenyon and Morgan, Lewis & Bockius (in the Manhattan office of each firm). Ted, more recently, practiced for just short of a decade with an intellectual property boutique law firm located in Chicago (Rakoczy Molino Mazzochi Siwik) that is consistently ranked by multiple publications as a Tier 1 (nationally) intellectual property law firm (a classification that includes less than 10 firms). The foregoing experience, together with Chiacchio IP’s lack of substantial overhead expenses, is what enables the Firm to offer the most competent of legal counsel for a reasonable price. 

Chiacchio IP offers customized billing options for all of its clients. While a number of the Firm’s clients choose a traditional hourly-based billing model, many others, for litigation, prefer flat monthly billing, often times paired with a contingency fee. For counseling and other transactional matters, Chiacchio IP provides project-based, flat fee billing options as well. In limited instances, Chiacchio IP will consider a cap on fees for a particular matter; however, given that there is often uncertainty as to how the matter may unfold, a fee cap typically is not the best billing model. The Firm believes that it is critical that the client’s and the Firm’s incentives remain fully aligned through the duration of a matter.

Meticulous, professional and incredibly patient

I recently hired Mr. Chiacchio for matters concerning copyright. He was meticulous, professional and incredibly patient—I couldn’t have asked for a better attorney-client experience. Not only would I hire him again, but I would also recommend Chiacchio IP to any colleague, friend or family member in need of IP assistance.

Laura A. Miller
Acclaimed Author

Responsive, knowledgeable

I wholeheartedly endorse Ted Chiacchio. He is responsive, knowledgeable and I can recommend him for any patent or other IP matter.

Stefan Stoyanov
Attorney

Knowledgeable and collaborate … always keeps his clients’ best interests in mind

Could not recommend Theodore Chiacchio more. From the moment I contacted him to help secure a strong patent for my IP, he approached the project with the utmost professionalism and intellect. His guidance and creative input helped steer me in the right direction and I could not have been happier with where we ended up. He is a very knowledgeable and collaborate patent attorney who always keeps his clients’ best interests in mind.

Jonathan Quick
Senior Creative Director, Turner Broadcasting

About Theodore Chiacchio

Theodore Chiacchio has been practicing Intellectual Property law for over 15 years. He counsels clients regarding all manner of patent and other Intellectual Property issues, and also monetizes their intellectual property assets for them. Ted has spent well over a decade litigating patent and other Intellectual Property disputes on behalf of his clients. He also prepares and prosecutes patent applications on behalf of his clients. Ted’s experience spans a wide range of technology areas, but he has particular expertise with matters involving the pharmaceutical arts. Ted is a regular contributor to IP Watchdog, consistently ranked the #1 Intellectual Property Law blog on the Internet.

Education

  • Cornell University Law School (Ithaca, NY), J.D., 2002.
    • Managing Editor, Cornell Int’l Law Journal; Member, Moot Court Board.
  • University of Paris I (Sorbonne) (Paris, France), Summer, 2000 (coursework).
  • Bucknell University (Lewisburg, PA), B.A., 1999; dual major: Biology and French.

Bar Admissions

  • New York and New Jersey (Not admitted in Illinois)
  • U.S. Court of Appeals for the Federal Circuit 
  • Registered to practice before the U.S. Patent and Trademark Office 

Publications

Chiacchio IP is an active contributor to industry literature. We also give frequent presentations on topics relating to business patents and other intellectual property.

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