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Joseph M. Barich
Shareholder
Email. jbarich@mcandrews-ip.com
Tel. (312) 775-8000
Education
University of Illinois, B.S. Electrical Engineering, 1994
University of Illinois, M.S. Electrical Engineering, 1996
Boston College Law School, J.D., 1998
Bar Admissions
Admitted to practice in Illinois. Member of the bar of the U.S. District Court for the Northern District of Illinois. Registered to practice before U.S. Patent and Trademark Office.
Professional Experience
Joe’s first experience with intellectual property was as a member of the Bioacoustics Research Group at Beckman Institute where he worked with an early-stage company to develop ultrasonic medical devices under a Small Business Technology Transfer Program (STTR) grant. Working in the early-stage development environment afforded Joe an appreciation of the special needs and considerations inherent to developing companies. It also provided him with an appreciation of the power of patenting in the innovation process, especially as a mechanism to promote market exclusivity in order to maximize revenue as well as drive corporate valuation.
Joe enjoys working with companies to develop cost-effective intellectual property solutions that drive revenue and provide value, especially solutions that meet the targeted needs of small to mid-sized corporations. In this regard, he specializes in developing and enforcing powerful intellectual property portfolios that are typically centered around a patent backbone, but often include copyrights, trademarks, trade secrets, proprietary designs, and license agreements to form a solution tailored to an individual company
In developing portfolios for clients, Joe has prosecuted over 700 patent applications in the U.S. and foreign countries and has registered several hundred copyrights. In the enforcement arena, he has been involved in numerous successful licensing efforts yielding millions of dollars to clients, often based on portfolios that he helped create. Joe has also successfully defended companies from attack by a competitor's patents on many occasions, often based in part on the threat of the competitor being countersued using the portfolio that he had developed.
In addition to developing and enforcing portfolios, Joe is often called on to evaluate the intellectual property of competitors and of potential acquisitions or licensees. In this regard, he has prepared numerous invalidity and non-infringement opinions and has conducted pre-market intellectual property product clearances as well as pre-investment analyses of corporate IP holdings.
Joe has worked with a wide variety of industries including high-tech innovations such as business methods, software applications, wireless and land-based communications systems, networking and internet-related applications, and computer and semiconductor devices. He has also worked with medical innovations such as imaging devices as well as consumer products such as furniture, grills, windshield wipers, and food products.
Joe is a recognized authority on patent prosecution and is currently an Adjunct Professor at the University of Illinois College of Law where he has taught “Patent Prosecution” since the Spring of 2005.
Joe was also recently named one of the 2008 Rising Stars on the Super Lawyers list.
Publications
Pre Issuance Publication of Pending Patent Applications: Not So Secret Any More
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