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Joseph M. Barich
Shareholder
Email. jbarich@mcandrews-ip.com
Tel. (312) 775-8000
Education
University of Illinois, B.S. Electrical Engineering, 1994
University of Illinois, M.S. Electrical Engineering, 1996
Boston College Law School, J.D., 1998
Bar Admissions
Admitted to practice in Illinois. Member of the bar of the U.S. District Court for the Northern District of Illinois. Registered to practice before U.S. Patent and Trademark Office.
Professional Experience
Joe helps his clients grow their Intellectual Property (IP) portfolios, advises them on IP strategy, helps them monetize and enforce their IP, and defends them from attack by a competitor’s IP. During his more than a decade of practice, Joe has worked with clients ranging in size from Fortune 500 companies to start-ups. He has worked with companies in a wide variety of industries and in many technical fields including wireless and land-based communication systems and networking, computer hardware and software innovations, Internet-based innovations such as software applications and business methods, medical imaging and treatment systems, and consumer products of many types.
In helping clients grow their IP portfolios, Joe enjoys working with companies to develop cost-effective IP solutions that drive revenue and provide value while at the same time meeting the targeted needs of the client’s specific industry and products. In this regard, Joe specializes in developing and enforcing powerful IP portfolios that are typically centered around a patent backbone, but often include copyrights, trademarks, design patents, trade secrets, and license agreements to form a solution tailored to an individual client. In developing portfolios for clients, Joe has prosecuted over 800 patent applications in the U.S. and foreign countries and has registered several hundred copyrights and numerous trademarks.
In advising clients, Joe is often called on to evaluate the intellectual property of competitors, of potential acquisitions, or for in-licensing or cross-licensing. In this regard, he has prepared numerous invalidity and non-infringement opinions and has conducted pre-market IP product clearances as well as pre-investment analyses of corporate IP holdings.
In the enforcement arena, Joe has aided clients in numerous successful licensing/ litigation efforts yielding millions of dollars to clients, often based on portfolios that he helped create. With regard to defending clients, Joe has also successfully defended companies from attack by a competitor’s patents and other IP on many occasions, often based in part on the threat of the competitor being countersued using the portfolio that Joe had developed.
In the academic arena, Joe is a recognized authority on patent prosecution and is currently an Adjunct Professor at the University of Illinois College of Law where he has taught “Patent Prosecution” since 2005. He also founded and directs a Patent Clinic wherein students draft full patent applications for student inventions that are referred by the College of Engineering’s Technology Entrepreneur Center (TEC). Additionally, it was Joe’s great honor to establish the Barich Excellence in Patent Law Award at the University of Illinois College of Law in 2008. The Barich Award honors a 3L law student having interest and accomplishments in patent law, especially patent prosecution. Further information with regard to Joe’s academic endeavors may be found on his personal website at joebarich.com
From 2009-2012, Joe directed a weekly Continuing Legal Education (CLE) program focusing on patent prosecution and portfolio management for attorneys at McAndrews.
Awards And Honors
Patent Buddy ® List of Top Patent Prosecutors (representing the top 2% of Patent Prosecutors)
2010 Young Alumni Achievement Award, University of Illinois Department of Electrical and Computer Engineering
2012 Alpha Pi Mu & Gamma Epsilon Excellence in Teaching Award (Univ. of Illinois Industrial and General Engineering student honor societies)
List of Teachers Ranked As Excellent By Their Students, University of Illinois Center For Teaching Excellence
Senior Member of IEEE (Institute of Electrical and Electronics Engineers)
2012 Rising Stars on the Super Lawyers list
2010 Rising Stars on the Super Lawyers list
2009 Rising Stars on the Super Lawyers list
2008 Rising Stars on the Super Lawyers list
Recent Presentations
Mayo Supreme Court Argument: 35 U.S.C. 101 Post-Bilski, MHM CLE Presentation (December 2011)
Prioritized Examination: A Practical Guide, MHM CLE Presentation (October 2011)
CyberSource And 101 Analysis – A Departure From Bilski?, MHM CLE Presentation (August 2011)
Updated PTO Statistics and the Impact of New Programs, MHM CLE Presentation (March 2011)
Basics of IP for Entrepreneurs, IllinoisLaunch: Winter Entrepreneur's Bootcamp (January 2011)
The PTO's 2010 KSR Guidelines Update, MHM CLE Presentation (September 2010)
Therasense: Will the Fed Cir Stop the Inequitable Conduct Madness?, MHM CLE Presentation (August 2010)
Review Of The Supreme Court's Recent Opinion in Bilski, McAndrews, Held & Malloy (MHM) Continuing Legal Education (CLE) Presentation (June 2010)
Graduation Brunch Speaker, U. of Illinois Dept. of Electrical And Computer Engineering (May 2010)
Issues in IP Licensing, Invention2Venture Entrepreneurship Workshop, U. of Illinois (Feb 2010)
IP and Designs, U. of Illinois Dept. of Industrial Design (Feb 2010)
Highlights of the Bilski Supreme Court Argument, MHM CLE Presentation (Dec 2009)
Design Patents: Recent Developments and Practical Strategies, Invited Client Presentation (Sep 2009)
IP and Entrepreneurship, U of Illinois, Lectures in Entrepreneurship Series (Sep 2009)
Intro to Patents, U of Illinois, Engineering Law Class (April 2009)
In re Larson: Recent Developments In The Ethical Duty of Disclosure, MHM CLE Presentation (April 2009)
35 U.S.C. Sec. 101: Statutory Subject Matter, MHM CLE Presentation (March 2009)
Results of Participation in the PTO’s First Action Interview Pilot Program, MHM CLE Presentation (Jan 2009)
Quoted Articles
Roy Strom, Local IP Lawyers consider issues in California Twitter account lawsuit, Chicago Daily Law Bulletin, January 31, 2012.
Amanda Robert, Google's bid for Motorola means play for many Patents, Chicago Daily Law Bulletin, August 26, 2011.
Amanda Robert, Business method patents hinged on one vote in Bilski, Chicago Daily Law Bulletin, June 29, 2010.
Erin Coe, Lack Of Guidance In Bilski Will Spark Suits: Attys, Law360, June 28, 2010.
Amanda Robert, Ruling may spur IP lawyers to rethink business model, Chicago Daily Law Bulletin, May 27, 2010.
Danyelle Michelini, Patent Clinic reaches out to student innovators, University of Illinois Col. of Engineering, April 7, 2010.
Publications
Subject Matter Ineligibility - The End of an Era?
(With Scott P. McBride), BNA's Patent, Trademark & Copyright Journal, 84 PTCJ 163, (2012)
View File
Maximize Your Patent's Potential Via Its Enabling Technologies And Appearance
Electronic Design, June 2011
View File
Two Takes on Bilski
Executive Counsel, August/September 2010
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In re Bilski - Recent Developments in Method Claiming
Journal of Law Technology & Policy (JLTP) (2009)
View File
Pre Issuance Publication of Pending Patent Applications: Not So Secret Any More
Journal of Law, Technology & Policy (JLTP) (2001)
(Cited in Congressional Research Service Reports For Congress)
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