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John T. Pienkos

John T. Pienkos

Partner
Milwaukee
office: 414.978.5630
fax: 414.223.5000
Chicago
office: 312.526.1614
fax: 312.655.1501
Overview

John focuses his practice on patent law and corporate transactions relating to intellectual property. He is registered to practice before the U.S. Patent and Trademark Office.

John’s technical knowledge is in the areas of electrical and mechanical engineering, including computer hardware, software and the Internet. In particular, he has experience with wireless communications and mobile devices; optics and electromagnetics; engines, motors and generators; agricultural equipment; facility heating and cooling systems; semiconductor devices, including microelectromechanical systems; imaging systems, including medical imaging technologies; control systems, including industrial controllers and motor controllers; automotive systems; computer hardware; memory/data storage devices; computer software, architecture and networking; artificial intelligence such as intelligent agents; and the Internet, e-commerce, and use of the cloud. John additionally has experience working with financial technology (fintech) subject matter including, for example, technologies relating to insurance, benefits, and payment services or involving one or more of the other technologies mentioned above.

John’s notable experience includes:

  • Providing extensive client counseling in relation to the pursuit of and strategy underlying several inter partes review proceedings.
  • Counseling clients on intellectual property matters, including strategies for pursuing and utilizing intellectual property rights.
  • Preparing and prosecuting numerous domestic and foreign patent applications in complicated technologies.
  • Preparing complex infringement-related patent opinions in anticipation of litigation.
  • Advising clients on corporate transactions involving the purchase or sale of intellectual property assets, including the performing of due diligence.
  • Preparing trademark applications and conducting related review of issues pertaining to the securing of trademark rights.

Industries

Services

Recognition

  • Chambers USA, Intellectual Property, 2009-2014

Education

  • Harvard Law School
  • M.S.E.E., University of Wisconsin
  • B.S.E.E., Marquette University

Admissions

  • Wisconsin
  • Illinois
  • U.S. Patent and Trademark Office

Professional Associations and Memberships

  • Wisconsin Chapter of the Licensing Executives Society, founder and co-chair
  • Wisconsin Intellectual Property Law Association
  • American Intellectual Property Law Association
  • American Bar Association
Experience
  • Preparing numerous petitions in inter partes review proceedings before the Patent Trial and Appeal Board.
  • Advised clients on corporate transactions involving the purchase/sale of intellectual property assets, including the performing of due diligence.
  • Counseled clients and prepared agreements in relation to the licensing of intellectual property rights, and approached potential licensees.
  • Counseled clients on intellectual property matters, including strategies for pursuing and utilizing intellectual property rights.
  • Prepared patent applications on a variety of technologies, including, for example, technologies relating to insurance, benefits, payment services, mobile devices, e-commerce and use of the cloud.
Thought Leadership
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Seminars
Community Leadership
  • Milwaukee Youth Symphony Orchestra (MYSO), Board of Directors