1100 Peachtree Street NE Suite 2800, Atlanta, GA USA 30309
Renae Wainwright helps global manufacturers build, defend, and monetize patent portfolios across dozens of countries, particularly in the mechanical, electromechanical, and industrial manufacturing sectors. Clients come to her for business judgment as much as patent advice. She learns the industries she works in from the inside, sitting with R&D and product teams, joining innovation and design reviews, touring manufacturing plants, walking trade show floors, and taking part in business-unit and executive meetings. This immersion gives her the context to advise on questions that are only partly legal: whether a competitor’s patent filing is a genuine commercial threat or a distraction, whether to license, litigate, or out-engineer, what a dispute is worth spending, what can safely be shared with a development partner or customer, and how to present a patent position to a board, an investor audience, or a counterparty across the table.
Renae builds patent portfolios with enforcement in mind. She drafts and revises claims against what clients and competitors are actually doing rather than in the abstract, such as a product entering the market, a manufacturing process running inside a plant, a newly published patent application, or a shift in a competitor’s IP filing strategy. She sets enforcement strategy for the portfolios she helps build, deciding which patents to assert, which continuations to pursue in light of business strategy and competitive activity, and when a business solution is the better answer than a lawsuit. Having helped build those portfolios, she knows what the prosecution history will support before a client commits to a position.
Much of Renae’s counseling concerns mitigating risk associated with other companies’ patents. She clears new products and processes before launch, prepares non-infringement and invalidity opinions, and works with engineering teams on design-around options when a third-party right stands in the way. She evaluates infringement allegations directed at her clients and advises on how and whether to approach a patent owner about a license or an acquisition. Where a client sells goods made by someone else, under a supply arrangement or a private-label program, Renae advises on the intellectual property representations, warranties, and indemnification provisions that determine who bears infringement risk.
When clients collaborate or co-develop with suppliers, customers, universities, or research institutes, Renae advises on the patent and confidentiality issues that shape the effort, including what can be disclosed and when, who owns what the parties create together, and how jointly developed rights are separated when a collaboration ends.
Renae also advises on intellectual property issues that arise in corporate transactions. On the buy side she works through data rooms and diligence responses, confirms ownership and chain of title, tests the scope and validity of a target’s key patents against their prosecution histories and foreign counterparts, and identifies encumbrances such as security interests, license grants, co-ownership, and settlement obligations that travel with the assets. She presents findings to deal teams and to representation and warranty underwriters, advises sellers preparing portfolios for sale, and handles the patent side of divestitures, carve-outs, and joint-venture spinouts. After closing, she advises on the licenses and settlement agreements a deal leaves behind, including scope, field-of-use, and pricing disputes that surface years later.
In contested proceedings before the Patent Trial and Appeal Board, Renae represents clients on both sides of the docket. She has prepared petitions challenging the validity of competitors’ patents, and she helps defend clients’ issued patents when competitors petition for review. She has also represented a patent owner in a derivation proceeding, one of the small number of such proceedings ever brought under the America Invents Act, and has written on the Board’s first derivation decision. Outside the United States, she represents patent owners and challengers in European Patent Office opposition proceedings. Renae advises clients on the economics of these disputes as well as the merits, including litigation budgeting, fee arrangements, and litigation funding.
Renae also helps companies build the internal processes they use to make IP decisions. Working with in-house legal, business, and R&D leaders, she has helped establish patent review committees and governance charters that set filing criteria and put decisions in front of the right people to ensure the patent portfolio tracks commercial objectives.
Renae is recognized by Chambers USA for Intellectual Property in Georgia (2021–2026) and has been listed in The Best Lawyers in America® for Patent Law (2026–2027). She has been named to the IAM Patent 1000: The World’s Leading Patent Practitioners for eight consecutive editions (2019–2026) and to the IAM Strategy 300: The World’s Leading IP Strategists for six consecutive editions (2021–2026), earning the Global Leader designation in 2025 and 2026. In 2024, she was selected as a BTI Client Service All-Star, a distinction based entirely on unprompted feedback from corporate counsel.
Renae maintains an active pro bono practice, and particularly enjoys representing a grandparent or other family member seeking to adopt a child already in their care.
Experience
IP program design and governance. Help companies build the internal structures that govern patent decisions: patent review committees and governance charters, filing criteria and decision rights, recurring portfolio review meetings on a monthly or quarterly cycle, invention-disclosure workflows, and inventor recognition programs. This work is done alongside in-house legal, business, and R&D leaders and is tailored to how a particular company already makes decisions.
Strategic and executive-level counsel. Work with clients on business planning as well as legal review, attending innovation meetings, product and design reviews, R&D sessions, and industry trade shows, and advising on what may be disclosed to development partners, customers, and investors. Prepare and deliver IP strategy presentations, competitive benchmarking, and filing-trend analysis for chief technology officers, general counsel, executive committees, and board audiences, translating portfolio data into the terms leadership uses to make capital and product decisions. Counsel on the commercial questions surrounding a dispute as well as the legal ones, including budgeting, fee structures, and litigation funding.
Global patent strategy and enforcement. Direct patent strategy and enforcement globally, prosecute continuations shaped by commercial objectives and competitive activity, and translate competitive intelligence, including products observed at industry trade shows, into claim amendment and prosecution strategy. Coordinate prosecution across dozens of jurisdictions with local counsel, and manage opposition and appeal activity affecting the portfolio in Europe, including coordinating technical arguments and written submissions with European counsel.
Competitive intelligence and patent landscape analysis. Run standing patent-watch programs in the United States and Europe, including local-language coverage, reviewing results on a weekly cycle and flagging third-party filings of concern for legal and R&D teams. Prepare competitor portfolio analyses and landscape assessments and translate them into filing, claim, and enforcement strategy.
Collaboration, co-development, and university partnerships. Advise on the patent and confidentiality issues that shape joint development efforts with suppliers, customers, universities, and research institutes. Counsel clients on what can be disclosed and when, how confidentiality obligations should be structured so that sharing information does not cost a client its own patent rights, who should own what the parties create together, how each side's existing technology is licensed into the project, and how jointly developed rights are separated when a collaboration ends. Coordinate closely with technology transactions specialists on the underlying agreements.
Patent diligence in corporate transactions. Evaluate patent assets for corporate acquirers and private equity and venture investors, working through data rooms, confirming ownership and chain of title, analyzing claim scope and validity against prosecution histories and foreign counterparts, and identifying security interests, license grants, and settlement obligations that run with the assets. Prepare findings for deal teams and for representation and warranty underwriters, provide input on disclosure schedules, and handle the patent side of divestitures, carve-outs, and joint-venture spinouts, including schedules of transferred rights and cross-border assignment recordation.
Product clearance at launch scale. Run ongoing freedom-to-operate programs, clearing new and private-label product lines and delivering go/no-go recommendations to product and sourcing teams. Related counseling covers patent marking, supplier indemnification obligations, intellectual property provisions in private-label supply agreements, and responses to third-party infringement allegations.
Design-led product counseling. Advise consumer products companies on navigating competitors’ patent portfolios, including analyzing claim scope, identifying non-infringement positions, guiding iterative design changes so a product clears third-party rights before tooling, and securing design and utility protection for the result.
Derivation proceeding under the America Invents Act. Represented a patent owner in a Patent Trial and Appeal Board derivation proceeding brought by a competitor, analyzing the petition and supporting declarations against the claims at issue, preparing claim charts, conducting conferences with the Board, and coordinating strategy with co-counsel in parallel litigation. Derivation proceedings are among the rarest contested proceedings at the PTAB.
Patent Trial and Appeal Board — petitioner and patent owner. Prepared petitions for inter partes review challenging competitor patents. Defends clients’ patents against competitor-filed inter partes review petitions, coordinating the response with parallel district court litigation and with continuation prosecution shaped by the art asserted in the petition.
Licensing and settlement counseling. Advise on interpretation and administration of patent licenses and litigation settlement agreements, including scope and pricing disputes under an existing settlement, technology development and statement-of-work agreements with equipment suppliers, and IP allocation in a joint-venture spinout.
Insights View All
Blogs
First of Its Kind: Lessons Learned from the PTAB’s First Derivation Decision
Emory University School of Law J.D. (2006) with honors, Order of the Coif
Northwestern University B.S. (2003) Industrial Engineering, magna cum laude
Georgia (2006)
Georgia Court of Appeals (2007)
Georgia Superior Court (2006)
Supreme Court of Georgia (2007)
U.S. District Court for the District of Georgia (2007)
U.S. Patent and Trademark Office
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