Todd A. Benni
Todd is the chair of McDonald Hopkins' IP Prosecution and Management Practice Group, leading the team on strategic issues for clients related to cost effective patent and trademark portfolio management, preparation and procurement of patents and trademarks, IP related due diligence, competitive analysis, new product clearance, and IP related agreements.In particular, Todd has significant experience drafting and negotiating a wide-range of software related agreements, both as a licensee and licensor. This also incudes drafting and negotiating subscription and software as a service related agreements.
Todd has a wide range of experience in advising innovative clients in ensuring that their IP strategies meet their business goals and objectives. Todd develops cost effective IP management strategies to meet budgetary goals, helps monitor progress of these goals all while ensuring the IP portfolio protects relevant business objectives.
Todd works has considerable experience working with clients in the medical device, automotive, consumer products, retail and startup industries.
Before joining McDonald Hopkins, Todd served as senior managing counsel of IP, advertising and licensing for a Fortune 100 global supplier and retailer of office products and services.
Todd earned a J.D., cum laude, from the University of Pittsburgh School of Law in 1998, where he served as business manager and editor of the Journal of Law and Commerce. He received a B.S. in industrial engineering from Purdue University in 1995.
- Helped manage the prosecution of thousands of matters for a Fortune 500 company, including complex reissue, enforcement and opinion matters. Assisted in several IP due diligence projects with this client to ensure acquisitions met business objectives.
- Assisted a medical device start-up in developing a robust patent strategy to incentivize investment in start-up to achieve first commercial sale.
- Implemented patent strategies in various consumer product fields, including mining portfolios to expand coverage of commercial products to help ensure market position.
- Developed and implemented IP strategies to help significantly reduce the cost of maintaining a Fortune 100 company’s IP portfolio while maintaining the overall integrity of the IP portfolio.
- Served as in-house attorney for one of his clients providing not only IP related services, but also general corporate counseling.
Admissions - Court
- Court of Appeals for the Federal Circuit
- U.S. District Court for the Northern District of Ohio
Admissions - State
- University of Pittsburgh School of Law
- Purdue University
- American Intellectual Property Law Association
- Patent Law Committee Member
- INTA - Law Firm Commitee Member
Public Service and Volunteerism
- Progressive Arts Alliance - Board member
- USPTO announces priority examination for COVID-19 related patents held by small and micro entities
- Breaking Brexit: Updates on the “no deal” scenario and how it will affect your European trademark rights
- USPTO extends patent and trademark deadlines due to COVID-19 related delays
- Intellectual property extensions resulting from coronavirus
- Protect your product design with surface ornamentations
- 5 important intellectual property questions for international sellers entering the U.S. market
- How to use intellectual property to increase franchisor entity value
- The Copyright Offices goes digital – finally
- Your product is green, but how do you advertise it?
- McDonald Hopkins represents GRAIL in $390M Series D financing
- McDonald Hopkins announces Todd Benni and David Movius will lead new Intellectual Property Practice Groups
- "Client Wants To Do Business in US, What To Do from an IP Perspective," ILN IP Insider, January 2019
- "A New Way to Mark Your Patents," RBMA Monthly Legal Update Digest, April 2012
- Discover Global Markets: U.S. Manufacturers to Europe & Beyond | Tuesday, September 19, 2017
- What your business needs to know about Chinese intellectual property | Thursday, December 12, 2013
- Patent Reform: Significant changes are coming March 16, 2013. Is your business ready? | Wednesday, January 16, 2013