John Augustyn represents clients in high stakes intellectual property litigation, client counseling, and prosecution. Leveraging his prior experience in management and as an engineer at Fortune 100 companies, John understands that IP and business issues require creative and cost effective legal solutions.
Litigation
John has been lead counsel in patent and trade secret litigations throughout the country at the trial and appellate levels. He also has been lead counsel in Post Grant proceedings at the USPTO and coordinated post grant proceedings in other countries. In addition, he has litigated cases at the International Trade Commission. His litigation experience has involved several areas, including electronics, magnetics, sensors, control systems, medical devices, printing processes, agricultural equipment, manufacturing equipment, automotive equipment, fuel storage, and consumer products, including Standard Essential Patents (SEP). Representative matters are provided below. John has presented over 15 CLE programs on litigation to hundreds of corporate and outside counsel.
Opinions
John counsels and renders opinions on patent infringement and invalidity including major product launches in competitive patent landscapes. These opinions often involve large patent families with multiple US patents and with existing litigations and patent office proceedings throughout the world. Representative matters are provided below.
Patent Prosecution
He has extensive experience in formulating patent strategies and managing patent portfolios. John manages the US and non-US patent prosecution for several international corporations. He has prepared or supervised the preparation of over 1000 US original patent applications and oversaw the prosecution of over 3000 non-US patent applications. Also, John has prepared or supervised the preparation of over 500 original design patent applications. In addition, John has presented over 20 CLE programs on patent prosecution to thousands of corporate and outside counsel.
Due Diligence
John performs due diligence for mergers and acquisitions involving various technologies. The due diligence often involves an analysis of the patents, trademarks, trade secrets, licenses, agreements, software, marketing, manufacturing processes, and Standard Essential Patents (SEP) and FRAND terms and rates. Representative matters are provided below.
IP Licenses and Agreements
He successfully negotiates and prepares agreements relating to well-known products and brands for both the seller/ licensor and the buyer/ licensee, including patent licenses, licenses for Standard Essential Patents (SEP) including FRAND terms and rates, technology licenses, trade secret agreements, joint venture agreements, trademark agreements, and research and development agreements. John has presented over 10 CLE programs on IP Agreements to hundreds of corporate and outside counsel.
Trade Secrets
John advises clients on trade secret matters including: litigating trade secret cases, negotiating trade secret agreements, advising clients on the best techniques for protecting their trade secrets, and helping clients decide whether to use trade secret versus patent protection. In addition, John has presented over 10 CLE programs on trade secrets to hundreds of corporate and outside counsel.
Education
John Augustyn received a B.S. in Engineering, with honors, from the Illinois Institute of Technology and attended on an athletic scholarship for soccer. He received a J.D. degree from Loyola University Chicago, where he graduated at the top 10% of his class. In law school, he received several awards for scholarship and writing, and was on the National Moot Court Team.
Articles and Lectures
He has authored several articles and chapters for books, has appeared on multiple television and radio programs, and has provided over 50 CLE programs to thousands of attorneys.
Teaching
In the evenings, he was an instructor at Loyola University Chicago School of Law for over five years. In addition, he was the advisor of the Intellectual Property Moot Court Team at Loyola University Chicago for over fifteen years. John has also been a guest instructor at Northwestern University School of Law.
Corporate Experience
Prior to attending law school, he worked as an engineer at a Fortune 100 company in the areas of Design Engineering, Manufacturing Engineering, and Test Engineering. He is an inventor on several US patents. He also was the Simulation and Logistics Manager at a 1000 person facility for a Fortune 100 company.
Law Firm Leadership
John has served several terms as a member of the board of the firm and serves on various committees of the board.