John G. Rauch
Shareholder
Overview

“I’ve seen a lot of mistakes over the years, solved a lot of problems, and developed a lot of skills. My clients benefit from all of that.”

In his nearly 25-year career as a patent attorney, John Rauch has helped his clients determine what to patent, when to patent, and how to obtain patents as quickly and painlessly as possible.  He has worked with companies of every size, from small start-ups to semiconductor and telecom giants, and has worked across a broad spectrum of technologies, with particular experience advising clients in the electronics, software, and biomedical fields.

John helps his clients and inventors move strategically through patent prosecution, beginning with discussions that pinpoint the invention and clarify the scope of the patent application. His article “What to Patent is a Strategic Question,” which appeared in Executive Counsel, exemplifies the way he thinks forward to help his clients right-size and otherwise manage their patent portfolios.

John tailors his approach to the specific challenges his clients face. For a large semiconductor client, for instance, he conducted “harvesting sessions” to elicit details from the inventors on what was innovative about a particular new chip.  In other patent prosecutions, he acts as a fireman, solving problems and making adjustments as necessary to see that an application is allowed. When appropriate, John is a negotiator, bridging communication gaps with patent examiners to ensure successful patent prosecution. At all times, he views his role as problem solver, with each prosecution a puzzle capable of solution.

Education
  • J.D., with High Honors
    Illinois Institute of Technology, Chicago-Kent College of Law, 1992
  • B.S., Electrical Engineering
    Purdue University, 1984
Bar Admissions
  • Illinois
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Patent & Trademark Office
Technical Background
  • Business Methods
  • Digital
  • Semiconductors
  • Signal Processing
  • Software
Experience | Overview
  • John advised Yahoo! in its pursuit of a patent relating to the bidding and charging processes for display advertisements on its site. Yahoo was able to license this patent application, generating a royalty stream. He also helped GoTo.com, acquired by Yahoo!, secure a separate patent relating to Internet advertising.

  • For Broadcom, John has worked on patent prosecutions involving communications and radio products.

  • John successfully executed several appeals to the Patent and Trademark Appeal Board following a patent examiner’s rejection of his client’s patent applications.

  • An electrical engineer by training, John worked two stints at Motorola, first as an integrated circuit designer and later as a patent attorney supporting the company’s cellular phone business. His technical expertise covers business methods and software, digital and analog electronics, semiconductors, signal processing, telecommunications and medical devices.

Experience | Legal

Brinks Gilson & Lione, Chicago, Illinois
1998-Present

Motorola, Inc., Libertyville, Illinois
Patent Attorney, 1995-1998 

Foley & Lardner, Chicago, Illinois
Associate, 1992-1995

Experience | Non-Legal

Applied Micro Circuits Corp., San Diego, California

Cray Research, Inc., Chippewa Falls, Wisconsin

Motorola, Inc., Mesa, Arizona
Integrated Circuit Designer, 1984-1989

Experience | Teaching
Chicago-Kent College Of Law, Chicago, Illinois
Adjunct Professor of Law, August 1994-2001
Mr. Rauch taught a course in Advanced Legal Research in Intellectual Property Law to second and third year law students.
Forward Thinking
alert
May 19, 2016

The Supreme Court recently granted a petition for writ of certiorari to review the Federal Circuit’s en banc decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC.

alert
May 12, 2016

President Obama signed into law yesterday the Defend Trade Secrets Act, establishing for the first time an ostensibly uniform national trade secret protection standard...
 

publication
April/May 2012
John G. Rauch penned the article “What to Patent is a Strategic Question,” for the April/May 2012 issue of Executive Counsel.
publication
August, 1993
Press Releases & Events
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, 2010-2016
Affiliations
  • Institute of Electrical and Electronics Engineers
  • Intellectual Property Owners Association
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