Intellectual Property Counseling & Protection
John Pienkos is a shareholder in the Milwaukee office of Whyte Hirschboeck Dudek and is a member of the firm’s Intellectual Property Law practice group. Mr. Pienkos focuses his practice on patent law and corporate transactions relating to intellectual property.
John’s technical expertise is in the areas of electrical and mechanical engineering and, in particular, includes expertise in wireless communications, 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, intelligent agents and the internet, e commerce and business methods.
- Harvard Law School, J.D., 1997
- University of Wisconsin, M.S.E.E., 1994
- Phi Beta Kappa, Tau Beta Pi, Eta Kappa Nu, Alpha Sigma Nu, Bradley
- Marquette University, B.S.E.E., summa cum laude, 1992
Awards & Distinctions
- Ranked in Chambers USA - America's Leading Lawyers for Business in Intellectual Property (2009-2013)
- Prepared and prosecuted numerous domestic and foreign patent applications in a variety of complicated technologies such as those listed above.
- Obtained the granting of patent rights as a result of appealing to the Board of Patent Appeals and Interferences.
- Prepared complex infringement-related patent opinions in anticipation of possible litigation.
- Conducted patentability and clearance studies and provided related patent opinions to clients.
- Prepared trademark applications and conducted related review of issues pertaining to the securing of trademark rights.
- Assisted clients with corporate transactions involving the purchase/sale of intellectual property assets, including the performing of due diligence regarding those assets.
- Counseled clients and prepared agreements in relation to the licensing of intellectual property rights, including the approaching of potential licensees.
- Counseled clients generally in relation to intellectual property matters, including strategies for pursuing and utilizing intellectual property rights.
- Founder and Co-chair of the Wisconsin Chapter of the Licensing Executives Society
- Wisconsin Intellectual Property Law Association
- American Intellectual Property Law Association
- American Bar Association
- Registered to practice before the U.S. Patent and Trademark Office
- Member, Board of Directors, Milwaukee Youth Symphony Orchestra (MYSO)
Articles and Presentations
- The Patent Guidebook, Author, published by the American Bar Association, November 2004
- American Inventors Protection Act and Its Impact on Business, Co-author, MBA Messenger, December 2000/January 2001