For more than 25 years, John has counseled clients on patent law and corporate transactions relating to intellectual property law. As a member of the firm’s Intellectual Property Practice Group, John provides extensive client counseling in relation to the pursuit and utilization of intellectual property rights, and advises clients on corporate transactions involving the purchase or sale of intellectual property assets.
John prepares and prosecutes numerous domestic and foreign patent applications in complicated technologies, resulting in hundreds of issued patents, in mechanical, electrical and software-related technologies on behalf of companies of all sizes, from Fortune 500 to small entrepreneurs. John manages patent portfolios for a variety of companies and provides strategic counsel in regard to the filing, procurement, and maintenance of patent rights, both domestically and abroad.
John also prepares patent opinions and provides guidance regarding the scope of intellectual property rights, and counsels clients in the area of post-grant proceedings such as inter partes review proceedings. In his career he has rendered numerous patent-related opinions, including patentability, non-infringement, and invalidity opinions, including opinions in anticipation of, or in the context of patent litigation.
In addition, John prepares and negotiates agreements relating to intellectual property, including license agreements, assignment agreements, purchase agreements, joint development and collaboration agreements, and confidentiality agreements. Further, John counsels clients regarding trademark rights, prepares trademark applications, and conducts related review of issues pertaining to securing trademark rights.
John has technical knowledge in the areas of electrical and mechanical engineering, including computer hardware, software and the Internet. His experience includes work in the areas of mobile devices, wireless communications, electromagnetics, optics, semiconductors, control systems, including industrial controllers and motor controllers, artificial intelligence such as intelligent agents, and a variety of complex systems, including imaging systems, heating and cooling systems, automotive systems, and agricultural systems, as well as engines, motors, and generators. Additionally, John has experience working with FinTech matters, including technologies relating to insurance, benefits, and payment services.
Membership & Involvement
- Board of Directors: Milwaukee Youth Symphony Orchestra (MYSO)
- Founder and Co-chair: Wisconsin Chapter of the Licensing Executives Society
- Member: Wisconsin Intellectual Property Law Association; American Intellectual Property Law Association; American Bar Association; Intellectual Property Owners Association
Resources & Insights
- Startup Week; Beloit, WI,
- Intellectual Property Owners Association Law Journal,
- Protecting Inventions Relating to Artificial Intelligence: Best PracticesProtecting Inventions Relating to Artificial Intelligence: Best Practices
John Pienkos and Jennifer Lacroix contributed to the paper, "Protecting Inventions Relating to Artificial Intelligence: Best Practices," which includes: questions to ask inventors, the law on inventorship, drafting tips, cross border considerations, and much more.
Harvard Law School, J.D., 1997
University of Wisconsin-Madison, M.S. Electrical Engineering, 1994
Marquette University, B.S. Electrical Engineering, 1992
- U.S. Patent and Trademark Office