John S. Paniaguas

Partner
johnp@kattenlaw.com
Chicago Office
p+1.312.902.5312
f+1.312.902.1061
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Overview

John S. Paniaguas assists technology companies with domestic and international strategic intellectual property planning, including domestic and international patent preparation and patent prosecution and licensing. He represents both privately held and publicly traded companies, including start-ups.

A former electrical engineer, John has extensive experience with numerous forms of technology, including:

  • electronic circuits and devices
  • semiconductor fabrication
  • ion implant devices
  • automotive sensors
  • application specific integrated circuits
  • computer systems
  • telecommunications systems
  • software
  • optical components
  • optical systems
  • electronic communications systems
  • optical communications systems
  • lasers
  • laser weapon systems
  • battery chargers
  • avionics
  • electrical high-voltage equipment
  • electrical circuit breakers
  • fossil and nuclear energy generation equipment
  • mechanical components and systems
  • complex mechanical systems
  • oxy-fuel combustion systems
  • electro-mechanical systems

As a member of the adjunct faculty at the DePaul University College of Law, John teaches Advanced Patent Law and has previously taught Introductory Patent Law. He has a strong commitment to pro bono work and was honored in 2004 with Katten’s Pro Bono Service Award for patent law work performed on behalf of inventors and artists.

John is a licensed professional engineer in Illinois and Indiana. He formerly served as in-house patent counsel for the McGraw Edison Company and for Motorola and was a partner in the patent specialty firms of Fitch, Even, Tabin & Flannery and Mason, Kolehmainen, Rathburn & Wyss.

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Recognition

AV Preeminent Peer Review Rating by LexisNexis Martindale-Hubbell, 2012–2013
Katten Muchin Rosenman LLP Pro Bono Service Award, 2004
Articles
January 1, 2012
"Investigating the Concept of Novelty in the America Invents Act," Developing a Patent Strategy (Aspatore)
January 28, 2008
"John S. Paniaguas on the Patentability of Tax Strategies and the Return to State Street Bank & Trust v. Signature Financial Group," LexisNexis Patent Law Center
Speaking Engagements
January 25, 2013
"Coping with the New First-Inventor-to-File Prior Art Law: What Patent Prosecutors Need to Know and Do Before and After the Effective Date," IPLAC
March 21, 2012
"International Perspectives on the America Invents Act," IPLAC
February 1, 2012
"The Impact of the America Invents Act," Chicago Daily Law Bulletin's 7th Annual Corporate Intellectual Property Law Conference
November 2, 2011
"Patent Wars: Roundtable on Defensive Patenting in the Wireless Technology Industry," IIT Chicago-Kent College of Law
October 11, 2011
"America Invents Act: Patent Reform 2011 IPLAC

Education

  • JD, DePaul University College of Law
  • BS, Purdue University

Bar Admissions

  • Illinois
  • Indiana

Court Admissions

  • US Court of Appeals, Federal Circuit
  • US District Court, Northern District of Illinois
  • US Patent & Trademark Office
  • US Supreme Court
  • US Court of Appeals, Seventh Circuit

Recognition

2012–2013
2004
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Memberships

  • DePaul University College of Law Center for Intellectual Property and Information Technology, Advisory Board, Chair Emeritus
  • Institute of Electrical and Electronics Engineers, Senior Member
  • Intellectual Property Law Association of Chicago, Chair, International Patent Law Committee
  • Knights of Columbus, Treasurer
  • Lake County Bar Association (Indiana), Board of Managers
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