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John S. Paniaguas
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John S. Paniaguas

Member

 
 
Phone: (312) 985-5559
Alt Phone: (219) 629-2926
Fax: (312) 985-5576
Email: johnp@clarkhill.com 
Office: Chicago
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Areas of Practice
Intellectual Property
Patents


News
Clark Hill PLC Continues to Grow as Five New Additions Join the Chicago Team

Intellectual Property Attorney John S. Paniaguas Joins Clark Hill Chicago




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Bar Admissions
Admitted to practice in Illinois, Indiana

Court Admissions
U.S. Court of Appeals, Federal Circuit, Northern District of Illinois, U.S. Patent and Trademark Office, U.S. Supreme Court and the U.S. Court of Appeals, Seventh Circuit.

Education
J.D., DePaul University College of Law
B.S.E., Purdue University

Memberships
DePaul University College of Law Center for Intellectual Property and Information Technology, Advisory Board, Chair emeritus
Institute of Electrical and Electronics Engineers, Senior Member
Knights of Columbus, Treasurer
Lake County Bar Association (Indiana), Board of Managers
Intellectual Property Law Association of Chicago (IPLAC), Chair, International Patent Law Committee Engineers, Senior Member
Intellectual Property Law Association of Chicago, Chair, International Patent Law Committee
Knights of Columbus, Treasurer
Lake County Bar Association (Indiana), Board of Managers

Recognitions

Martindale-Hubbell® AV® Preeminent™ Top-Rated Lawyer in Intellectual Property Law (2012–2013)
John S. Paniaguas assists technology companies with domestic and international strategic intellectual property planning including domestic and international patent preparation and patent prosecution and licensing. He represents both privately held and publicly traded companies, including start-ups.

A former electrical engineer, John has extensive experience with numerous forms of technology, including electronic circuits and devices, semiconductor fabrication, ion implant devices, automotive sensors, application specific integrated circuits, computer systems, telecommunications systems, software, optical components, optical systems, electronic communications systems, optical communications systems, lasers, laser weapon systems, battery chargers, avionics, electrical high-voltage equipment, electrical circuit breakers, fossil and nuclear energy generation equipment, mechanical components and systems, complex mechanical systems, oxy-fuel combustion systems and electro-mechanical systems.

As a member of the adjunct faculty at the DePaul University College of Law, John teaches Advanced Patent Law and has previously taught Introductory Patent Law. He has a strong commitment to pro bono work and was honored in 2004 with Katten’s Pro Bono Service Award for patent law work performed on behalf of inventors and artists.

John is a licensed professional engineer in Illinois and Indiana. He formerly served as in-house patent counsel for the McGraw Edison Company and for Motorola and was a partner in the patent specialty firms of Fitch, Even, Tabin & Flannery and Mason, Kolehmainen, Rathburn & Wyss.

Publications and Speaking Engagements

  • Speaker, “Coping with the New First-Inventor-to-File Prior Art Law: What Patent Prosecutors Need to Know and Do Before and After the Effective Date,” IPLAC (January 25, 2013)

  • Moderator, “International Perspectives on the America Invents Act,” IPLAC (March 21, 2012)

  • Moderator, “The Impact of the America Invents Act,” Chicago Daily Law Bulletin’s 7th Annual Corporate Intellectual Property Law Conference (February 2012)

  • Author, “Investigating the Concept of Novelty in the America Invents Act,” pages 119–131, Developing a Patent Strategy (Aspatore 2012)

  • Panelist, “Patent Wars: Roundtable on Defensive Patenting in the Wireless Technology Industry,” IIT Chicago-Kent College of Law (November 2, 2011)

  • Speaker, “America Invents Act: Patent Reform 2011," IPLAC (October 11, 2011)

  • Author, “A Practitioner's Guide to Protecting Intellectual Property Assets,” DePaul Journal of Art, Technology & Intellectual Property Law, Vol. 20, No. 2, pages 279–325 (Spring 2010)

  • Author, “John S. Paniaguas on the Patentability of Tax Strategies and the Return to State Street Bank & Trust v. Signature Financial Group,” LexisNexis Patent Law Center (January 28, 2008)


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