Amir N. Penn
Shareholder
Overview

“The focus is not simply to get a patent. The focus is to obtain a patent that provides real value to the client, which only comes from knowing the client’s business, both now and in the future.”

From preparing patent applications to licensing IP rights, Amir Penn manages his clients’ patent portfolios with a constant awareness of their business goals.  With two degrees in electrical engineering, including graduate study on semiconductor devices and processing, he has substantial experience prosecuting patents, drafting opinions, and managing IP rights in the fields of software-related technology, printer technology, image processing, and wireless communications.

Identified by his peers as a Leading Intellectual Property Lawyer in Illinois, Amir has particular experience overseeing legal teams prosecuting and managing large patent portfolios.  He focuses on both the business and budget concerns of his clients, ensuring that work on any individual patent is serving their needs. His large-portfolio clients include developers of printer technology, networking systems, semiconductor devices, consumer electronics, and security systems.

Amir assists clients with IP protection in the United States as well as Europe, Israel, and other countries in which they operate.  Across all of his work, he places value on thinking forward—positioning his clients, and their specific patents, most advantageously for the future.  He has taught a patent prosecution seminar at Loyola University Chicago School of Law, and spoken on multiple occasions to engineering audiences regarding patent law.

Education
  • J.D.,
    Northwestern University School of Law, 1994
  • M.S., Electrical Engineering
    Stanford University, 1991
  • B.S., Electrical Engineering
    The University of Cincinnati, 1990
Bar Admissions
  • Illinois
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Patent & Trademark Office
Technical Background
  • Analog
  • Business Methods
  • Digital
  • Semiconductors
  • Signal Processing
  • Software
Experience | Overview
  • Worked with product launch team for home safety device in analyzing patentable features of product, conducting freedom-to-operate analysis, and obtaining patent protection.
  • Advised start-up company on initial product launch, analyzing patentable features of product and obtaining protection in budget-conscious manner.
  • Frequently works with foreign associates to prosecute patents in Europe, Israel, and other foreign jurisdictions.
Experience | Legal

Brinks Gilson & Lione, Chicago, Illinois
Shareholder, 2006-Present
Counsel, March 2003-December 2005

McDonnell Boehnen Hulbert & Berghoff, Chicago, Illinois
Income Partner, 1999-2003
Associate, 1997-1999

Leydig Voit & Mayer, Chicago, Illinois
Associate, 1994-1997
Summer Associate, Summer 1993

Experience | Non-Legal

I.B.M. T.J. Watson Research Center, Yorktown Heights, New York
Summer Engineer, Summer 1990

Comsat Laboratories, Clarksburg, Maryland
Co-op Engineer, 1986-1989, 6 months/year

Forward Thinking
alert
August 14, 2017

The Paris Climate Agreement sets forth goals for the reduction of greenhouse gases with the magnitude and timeline for such reduction being self-imposed...

in the media
December 16, 2016
In the December 16, 2016 Chicago Daily Law Bulletin’s In the News column, Amir Penn was mentioned for speaking at the Intellectual Property Owner Association’s “BRI and Claim Drafting” webinar on December 9th. Please click ...
in the media
June 15, 2016
On June 15, 2016, Amir N. Penn and Daniel A. Parrish authored an article for Law360 entitled, "5 Ways To Overcome An Examiner’s Post-Alice 101 Rejection." Please visit here to read more.
multimedia
January 28, 2014
Brinks offers its glimpse into three significant developments for 2014: Innovation Act: Pending Patent Litigation Reform Legislation Patentable Subject Matter: Biotech and Software Industries Year-in-Review Top Trademark ...
multimedia
September 18, 2013

Have you ever wondered how Examiners at the U.S. Patent Office meet their production requirements? ...

multimedia
January 29, 2013

Brinks Gilson & Lione offered its glimpse into three significant developments for 2013. The seminar is eligible for one ...

Presentations
  • "The Current Landscape of Patentability for Computer Implemented Inventions,” Chicago chapter of the Institute of Electrical and Electronics Engineers (IEEE) Brinks Gilson & Lione Seminar, Chicago, April 10, 2014
  • "Patents: Part of the Engineer's Skill Set Now and for the Future," co-present with John Nethery, IEEE Chicago Chapter’s ‘An Engineered Future’ Tech Conference and Exhibition, Argonne National Labs, November 8, 2012
Press Releases & Events
December 09, 2016
On December 9, Amir Penn will co-present, "BRI and Claim Drafting" at the IPO Chat Channel Webinar,12:00pm-1:00pm CST.
December 07, 2016

CHICAGO—Amir N. Penn, a patent prosecutor and shareholder at intellectual property law firm Brinks Gilson & Lione, will be a featured speaker for the Intellectual Property Owners Association’s Chat Channel Webinar “BRI and Claim Drafting,” on December 9, 2016, 12:00pm-1:00pm CST...

December 7-9

On December 7, Amir Penn and John Nethery will present, "Patents: Why they matter so much as VR takes hold...

August 10, 2016

CHICAGO—Amir N. Penn, a patent prosecutor and shareholder at intellectual property law firm Brinks Gilson & Lione, ...

May 03, 2016
To begin the series “Peeking Behind the Curtain – Explaining the Inner Workings of the US Patent Office”, we present “Understanding the Patent Examiner Count System In Order to Advance Prosecution”. An ...
October 23, 2014
CHICAGO—Gary M. Ropski, a shareholder at intellectual property law firm Brinks Gilson & Lione and the firm's past president, has been named the #1 Leading Intellectual Property Lawyer in Illinois by Leading Lawyers, and fifty-nine ...
April 10, 2014
On April 10, John F. Nethery and Amir N. Penn will present: “The Current Landscape of Patentability for Computer Implemented Inventions.” at the Chicago chapter of the Institute of Electrical and Electronics Engineers (IEEE).
November 8, 2012
On November 8, Amir N. Penn and John F. Nethery will be presenting, "Patents: Part of the Engineer's Skill Set Now and for the Future" at Argonne National Labs.
September 18, 2012
CHICAGO – Leading Lawyers Network has named 54 attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, as 2012 Leading Lawyers in intellectual property in Illinois for 2012. The roster ...
Honors
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2010-2016
  • Associate Editor, Northwestern University Law Review, Northwestern University, 1993-1994
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