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Intellectual Property Law: Counseling,
Licensing, Litigation & Procurement
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Joseph J. Berghammer
Attorney
Joe Berghammer assists clients in achieving their business goals through creative intellectual property solutions. In his prosecution practice, Joe Berghammer assists clients in obtaining, maintaining and registering patents, trademarks and copyrights. Mr. Berghammer has assisted numerous Fortune 100 companies in developing and augmenting their patent programs through the successful use of incentive programs and invention harvesting sessions. Mr. Berghammer often utilizes creative prosecution strategies for achieving clients’ business goals. These strategies include the use of early pre-grant publication procedures to obtain patent rights within as little as thirty days, maintaining continuing prosecution for important inventions, and devising strategies to limit clients' costs in creating and managing their patent and trademark portfolios. Mr. Berghammer has extensive experience in the chemical, mechanical, electrical, and business method arts.

In his counseling practice, Mr. Berghammer assists clients in the successful launch of new products, the analysis and navigation of competitive intellectual property threats and the development of strong intellectual property programs. Mr. Berghammer also assists clients in the assessment and acquisition of intellectual property (including the due diligence related thereto) and in the valuation of internal and external intellectual property.

In his litigation practice, Mr. Berghammer has been successful before juries and Judges. Mr. Berghammer has seized the goods of infringers, obtained preliminary injunctions and succeeded in full trial of damages and permanent injunction. Mr. Berghammer also is adept at utilizing litigation to achieve clients’ business goals prior to the incursion of costs associated with full litigation. Joe believes in strong and simple presentations of facts and law and the utilization of technology to simplify issues. Mr. Berghammer also assists clients in “right-sizing” their litigation to achieve their business goals.

Joe Berghammer is an adjunct professor in intellectual property litigation at the Northwestern Law School and previously served as an adjunct professor in intellectual property litigation at the Georgetown Law Center. He is a former Chair of the Board of Directors of the Wisconsin Bar Association Intellectual Property Law Section and is a founding member of the Intellectual Property Academy. He is listed as a leader in intellectual property law in the 2015 edition of Best Lawyers in America.

Mr. Berghammer has authored numerous articles and spoken broadly on intellectual property issues, including:

  • "Creative Litigation Strategies—Winning Before the Race Has Begun,”
  • “False Patent Marking Cases Become the New Craze” from The IP Strategist;
  • "IP Rights in 30 Days" from IP Law & Business,
  • "Bilski v. Kappos: Business Methods Still Patentable After All These Years" from Landslide,
  • “Understanding False Patent Marking in Packaging” from Packaging Digest,
  • "Taking Products to Market: Key Preliminary Legal Steps,”
  • "Adopting a 'Mustard Seed' Strategy" in developing patent portfolios from Grocery Manufacturers of America's Forum,
  • "Opinions of Counsel—Emerging Business and Legal Issues,”
  • "The New (Electronic) Street for Counterfeiting" from the Intellectual Property Counselor,
  • "Valuation and Due Diligence in Acquiring Intellectual Assets,”
  • "International Patent Protection."

Mr. Berghammer earned his B.S. degree in Chemical Engineering from the Massachusetts Institute of Technology, where he was awarded the Ford Foundation Scholarship for graduating as the top student in his class. Mr. Berghammer earned his J.D. degree from the Yale Law School, where he was the managing editor of the Yale Journal on Regulation. Upon graduation from Law School, Mr. Berghammer was a law clerk to Honorable Federal District Court Judge Terence Evans in the Eastern District of Wisconsin.

Mr. Berghammer practices in the Chicago office of Banner & Witcoff, Ltd.

Office
Ten South Wacker Drive
Suite 3000
Chicago, IL 60606-7407
T 312.463.5000
F 312.463.5001
Education
B.S. 1991, Massachusetts Institute of Technology
J.D. 1994, Yale University
Bar Admissions
1995, Wisconsin
2001, Illinois
Court Admissions
U.S. Circuit Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Seventh Circuit
U.S. District Court for the Eastern District of Wisconsin
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Western District of Wisconsin
 
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