John Freeman
Shareholder
Overview

“Sometimes I look at an issued patent and think the lawyer involved didn’t try very hard to secure the broadest protection possible. In my case, I always try to take an aggressive approach to see what kind of coverage I can get for my client.”

A former U.S. Patent and Trademark Office (“USPTO”) Patent Examiner, John Freeman focuses his practice on patent preparation and prosecution; counseling; licensing; and opinion work, particularly in the electro-mechanical arts. He has extensive experience preparing and prosecuting both domestic and international patents. Clients regularly come to John for opinions regarding patentability and patent validity, as well as potential infringement liability for new products. He has recent experience with the new post-grant review proceedings instituted under the America Invents Act.

With both undergraduate and graduate degrees in physics, John’s technical background gives him a strong foundation for understanding his clients’ innovations. He helps clients think forward by identifying aspects of their inventions they might not have thought to patent, giving them even more protection for valuable, market-leading innovations. A dedicated advocate for his clients before the USPTO, John takes an aggressive approach to achieve the broadest patent protection possible.

Known as a problem-solver around the firm, John has developed a reputation for getting patents in cases that have stalled or run up against roadblocks at the USPTO. He often represents solo inventors who have good ideas but lack the experience needed to draft an effective patent application that will give adequate protection to a commercially viable product. John’s other clients include large international corporations and mid-sized companies. With such a diverse client base, he has developed a broad familiarity with many industries and technologies. As a Patent Examiner, John was responsible for reviewing applications involving the X-ray arts, and has handled a significant amount of work in that area. He also prepares and prosecutes patents for measuring devices that use diffraction principles, laser systems used in eye surgery, other medical equipment, and business processes.

Education
  • J.D.,
    The George Washington University Law School, 1990
  • M.S., Physics
    University of Wisconsin, 1983
  • B.S., Physics, cum laude
    University of Illinois, 1981
Bar Admissions
  • Illinois
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Patent & Trademark Office
Technical Background
  • Business Methods
Experience | Representative Matters
  • Prepared and prosecuted patent applications regarding clam-shell packages for sandwiches and burgers
  • Prepared and prosecuted patent applications regarding machinery used for packaging individual cheese slices
  • Prosecuted patent applications regarding meat products designed to be refrigerated and later cooked
  • Prosecuted patent applications regarding packaging of liquids, such as wine, for consumer consumption
  • Took over the case of a solo inventor of technology involved in laser vision correction that had stalled with the USPTO examiner for technical reasons. After working out the issues, secured a broad patent for the inventor of this next-generation technology
  • Achieved broad patent protection for technology with the potential to become an industry standard for cone beam CT imaging
  • Secured a broad patent for an innovative device that administers eye drops in the form of mist that does not trigger the blinking reflex and results in more medication being delivered to the surface of the eye
Experience | Legal Experience

Brinks Gilson & Lione, Chicago, Illinois
September 1990-Present

U.S. Patent and Trademark Office, Arlington, Virginia
Patent Examiner, October 1985-May 1990
Examined U.S. patent applications dealing with inventions which use radiant energy with special emphasis on gamma ray and X-ray inventions, including X-ray lithographic machines and processes.

Experience | Non-Legal Experience

University of Illinois, Urbana-Champaign, Illinois
Lab Assistant, Physics Department, January 1981-May 1981 

Experience | Teaching Experience

Loyola University Law School, Chicago, Illinois
Adjunct Professor, September 1991-Present

University of Wisconsin, Madison, Wisconsin
Teaching Assistant, August 1981-May 1985

Forward Thinking
alert
January 30, 2017

Earlier this month, the Supreme Court of the United States heard oral arguments in Lee v. Tam to examine the constitutionality ...

multimedia
November 15, 2016

In our continuing series, “Peeking Behind the Curtain – Explaining the Inner Workings of the US Patent ...

multimedia
October 26, 2016

In our continuing series, “Peeking Behind the Curtain – Explaining the Inner Workings of ...

alert
October 05, 2015
As a follow up on our client alert sent on September 11, 2015, available here, the Patent Trial and Appeal Board (“PTAB”) on September 25, 2015 declined to sanction Coalition for Affordable Drugs (“CAD”), the petitioner of ...
alert
September 11, 2015
Since the launch of Inter Partes Review (“IPR”) in 2012 pursuant to the American Invents Act (“AIA”), the general issues before the Patent Trial and Appeal Board (“PTAB”) have been straight forward. First, the ...
alert
August 20, 2015
On August 19, 2015, the U.S. Patent and Trademark Office (PTO) announced a second round of proposed changes to the rules for America Invents Act (AIA) proceedings based on comments and feedback the PTO has received in the past year. As PTO Director ...
publication
September 2010
John C. Freeman penned the article 'Wyeth v. Kappos: The United States Patent Office is Forced to Change Course,' in the September 2010 issue of Engage: The Journal of the Federalist Society's Practice Groups.  
Press Releases & Events
November 14, 2016

On November 14, in our continuing series, “Peeking Behind the Curtain – Explaining the Inner Workings of the US ...

October 25, 2016

On October 25 at 12:00PM (CST), in our continuing series, “Peeking Behind the Curtain – Explaining the Inner Workings of ...

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 ...
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, 2004-2012, 2014-2016
Affiliations
  • American Bar Association
  • Illinois State Bar Association
  • Chicago Bar Association
  • American Intellectual Property Law Association
  • Intellectual Property Law Association of Chicago
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