Attorneys

Patrick Burns

pburns@gbclaw.net

Direct: 312.987.4001

EDUCATION:

B.S., Electrical Engineering

University of Illinois

1972


J.D., Chicago-Kent

College of Law

Illinois Institute of Technology

1978

Patrick G. Burns


 

Patrick G. Burns is a founding shareholder at Greer, Burns & Crain in Chicago. The emphasis within his practice today is patent prosecution and opinions. 

 

An accomplished intellectual property attorney in the United States, Mr. Burns has handled litigation involving a variety of intellectual property disputes in the Federal Circuit, Federal District Courts, and the International Trade Commission.

 

Mr. Burns is a prolific author and lecturer on intellectual property rights, and has taught in a seminar for the Patent Resources Group entitled “’Designing Around’ Valid U.S. Patents” since 1994.

                                                                          

All aspects of patent infringement are addressed in “’Designing Around’ Valid U.S. Patents” including opinion preparation, claim interpretation, the doctrine of equivalents, the doctrine of prosecution history estoppel, legitimate design-around activities, and techniques for avoiding legitimate design-arounds.

 

Mr. Burns is active within the IP legal community. He is a past President of the Intellectual Property Law Association of Chicago, has served on its Board of Managers, and was Chairman of its Computer Technology Committee. In addition, Mr. Burns is a past Chairman of the Patent, Trademark and Copyright Committee of the Chicago Bar Association, and has been involved in bar association activities throughout his career.

 

Mr. Burns was an Adjunct Professor of Law at Chicago-Kent College of Law from 2006-2013.  He received a Distinguished Alumni Award from the Chicago-Kent IP Law Society in 2009 and an Alumni of Distinction Award in 2013.  Now he is an Adjunct Professor at DePaul University College of Law and serves on the Advisory Board of BNA’s Patent, Trademark & Copyright Journal.

 

Rated AV Preeminent by Martindale-Hubbell since 1984, Mr. Burns was named an Illinois Super Lawyer by Law & Politics Magazine and a Leading Lawyer by the Chicago Law Bulletin.  Mr. Burns received a B.S. Degree in electrical engineering from the University of Illinois in Urbana in 1972 and a J.D. degree from Chicago-Kent College of Law in 1978.

 

 Experience

  • Thirty-five years of patent, trademark and copyright prosecution
  • Opinions on patent infringement, validity and enforceability
  • Patent, trademark, copyright and trade secret litigation in the State and Federal Courts, and in the International Trade Commission
  • Expert Witness in Federal Court Litigation

 

Professional Activities

  • Adjunct Professor, DePaul University College of Law, 2013-
  • Adjunct Professor, IIT/Chicago-Kent College of Law, 2006-2013
  • Lecturer, Patent Resources Group, 1987 -
  • Lecturer, U.S. Patent Practice, Japan Intellectual Property Association, 2001 -
  • Judge, Saul Lefkowitz Moot Court Competition, sponsored by the International Trademark Association
  • Fundamentals of Patent Prosecution 2012-2013: A Boot Camp for Claim Drafting and Amendment Writing
  • Member of the Advisory Board of BNA’s Patent, Trademark & Copyright Journal
  • President of the Intellectual Property Law Association of Chicago, 2009
  • Board of Managers of the Intellectual Property Law Association of Chicago, 1997
  • Chairman of the Patent, Trademark and Copyright Committee of the Chicago Bar Association, 1995

 

Awards

  • 2013 Alumni of Distinction Award, IIT/Chicago-Kent College of Law
  • 2009 Distinguished Alumni Award, Chicago-Kent IP Law Society
  • Named to Leading Lawyer’s Network by Chicago Law Bulletin
  • Named an Illinois Super Lawyer by Law & Politics Magazine

 

Major Publications

  • Contributing author of ‘Designing Around’ Valid U.S. Patents, published by the Patent Resources Group
  • Contributing author of Electronics & Computer Patent & Copyright Practice, published by the Patent Resources Group
  • Contributing author of Claim Construction in the Federal Circuit, published by Thomson West (2006-2008)
  • Counsel of Record for Amicus The Intellectual Property Law Association of Chicago in KSR Int’l. Co. v Telefelx et al., No. 04-1350 (Supreme Court of the United States) (October 2006) DOWNLOAD .PDF
  • Counsel of Record for The Intellectual Property Law Association of Chicago in Maersk Drilling USA, Inc. v. Transocean Offshore Deepwater Drilling, Inc., No. 13-43 (2013) (Supreme Court of the United States) DOWNLOAD .PDF

 

Additional Publications and Speeches

  • Tips for Drafting Claims Fully Covering Standards (Korea, Japan) (2012-2013)

 

  • Ethics Violations in the U.S. Patent and Trademark Office
    Presented to the Bay Area In-house Med-Tech Association, Menlo Park, CA (April 2013)

 

  • A Simpler Approach to Claim Construction

   BNA’s Patent, Trademark & Copyright Journal, 77 PTCJ 717 (April 2009)

  

  • In The Wake: The PTO Guidelines On KSR
    Landslide Vol. 1, No. 3; Publication of the ABA Section of Intellectual Property Law (January/February 2009) 

 

  • Effective Patent Prosecution Techniques: Drafting and Amending Patent Claims In Preparation for Litigation
    1st Annual Intellectual Property Institute, IICLE, Chicago, Illinois (2008) DOWNLOAD .PDF 

 

  • In Re: Bilski
    Chicago-Kent College of Law, Chicago, Illinois (September 2008) DOWNLOAD .PDF 

 

  • Changes For The Patent Prosecutor: The Guidelines On KSR And Recent Trends In The Written Description And Enablement Requirements
    52nd Annual Intellectual Property Law Conference, The John Marshall Law School, Chicago, Illinois (2008)

 

  • Drafting Instructions For U.S. Counsel
    Chicago, Illinois (2007) DOWNLOAD .PDF

 

  • Understanding Patent Infringement Opinions And The Scope Of Patent Protection
    IP Seminar of Tai E International Patent & Law Office, Taiwan (November 2006)
    DOWNLOAD .PDF

 

  • Examination Guidelines for Determining Obviousness under 35 U.S.C. Section 103 in view of the Supreme Court decision in KSR International Co. v. Teleflex Inc. (2007)
     
  • Willfulness in Patent Litigation
    Intellectual Property Law Association of Chicago – The John Marshall Law School (April 2007)

 

  • The Pros And Cons Of Using Means Plus Function Language In U.S. Patent Claims
    (January 2006) DOWNLOAD .PDF

 

 

  • Recent Developments In U.S. And Japan Patent Law
    Japan (March 2005) DOWNLOAD .PDF

 

  • What Controls Claim Interpretation, the Dictionary or the Specification?
    Japan (November 2003)

 

  • Advising Clients on Designing Around in Today’s Ever-Changing World
    40th Annual Program on Intellectual Property Law, The Center for American and International Law, Dallas, TX (November 2002)

 

  • Applying Prosecution History Estoppel after the Supreme Court’s Decision in Festo
    Chicago Bar Association, (June 2002)

 

  • Non-Infringement And Invalidity Opinions
    Greer, Burns & Crain in-house Seminar (February 2002) DOWNLOAD .PDF

 

  • Simplifying / Clarifying The Equivalents Analysis Through Legislation
    Colorado Bar Association (2000) DOWNLOAD .PDF

 

  • The Scope of Protection for Software
    Japan (November/December 1999)

 

  • Drafting Better Specifications and Claims in Light of Recent Federal Circuit Decisions
    Japan (November 1999)

 

  • Preparing U.S. Software Patent Applications for Later Filing in Foreign Countries, Intellectual Property Law Association of Chicago – The John Marshall Law School (May 1999)

 

  • When Can No Reasonable Jury Find Patent Infringement Under The Doctrine Of Equivalents?
    AIPPI (Japan 1999) DOWNLOAD .PDF

 

  • Translating and Understanding Patentability Opinions
    LES Annual Meeting, Miami, Florida (1998) DOWNLOAD .PDF

 

  • The Importance of Defining the Inventive Concept in U.S. Patent Claims
    Japan (October 1997)

 

  • How to Obtain Broad Patent Protection in View of Most Recent CAFC Decisions
    41st Annual Conference on Developments in Intellectual Property Law – The John Marshall Law School (February 1997)

 

  • Patent Infringement and Patent Prosecution in the U.S.
    AIPPI, Japan (February 1996)

 

  • Broader Protection For Process Patent Owners Can Create Problems For The Unwary
    Welsh & Katz, Chicago, Illinois, Newsletter Vol. 5, No. 1 (1988-89)

 

Bar Memberships

  • U.S. Patent and Trademark Office
  • Supreme Court of the State of Illinois
  • U.S. District Court for the Northern District of Illinois
  • U.S. Federal Circuit Court of Appeals
  • U.S. Seventh Circuit Court of Appeals
  • U.S. Fourth Circuit Court of Appeals
  • U.S. Supreme Court

 

Example Technical Fields

  • Animal Feeding Systems
  • Computer Systems and Circuits
  • Construction Tools
  • Electric Hair Trimmers and Attachments
  • Home Appliances
  • Liquid Crystal Displays
  • Luggage
  • Magnetic and Optical Disk Drives
  • Machine Tools
  • Nuclear Waste Disposal Systems
  • Photographic Equipment
  • Piezoelectric Devices
  • Plasma Display Devices
  • Polymer Activation Systems for Waste Water Treatment
  • Semiconductor Devices
  • Solar Energy Systems
  • Telecommunication Systems