12.13.14 | Richard S. Stockton

Richard S. Stockton

Attorney

Bio Image

Richard Stockton advises clients on all aspects of intellectual property, including prosecution, litigation, portfolio management and general counseling. Exemplary achievements include:

  • Procuring thousands of US design patents, utility patents, trademark registrations, and copyright registrations; supervising the procurement of thousands of counterparts in more than 130 foreign jurisdictions and supervising buyer/seller IP due diligence in large acquisition and IPO contexts
  • Serving as counsel of record in dozens of patent, trademark and copyright litigations, and assisting with many more IP litigations
  • Litigating inter partes review petitions at the Patent Trial and Appeal Board of the US Patent and Trademark Office (USPTO)
  • Prevailing in dozens of domain name arbitrations, and negotiating numerous no-decision settlements and acquisitions
  • Managing multiple IP portfolios with thousands of properties worldwide, coordinating the transfer of a >10,000 property portfolio and supervising buyer/seller IP due diligence in large acquisition and IPO contexts
  • Supervising infringement, invalidity, and counterfeiting investigations worldwide; drafting cease and desist letters and responses; rendering infringement, invalidity/unenforceability and freedom-to-operate opinions; and preparing licensing agreements and IP holding company transfers

Richard earned a Bachelor of Science degree in Electrical Engineering from the University of Illinois at Urbana-Champaign. He graduated from the University of Illinois College of Law cum laude, where he was the Editor-in-Chief of The University of Illinois Journal of LawTechnology & Policy, the Legislation Editor of the Illinois Law Update section of The Illinois Bar Journal and a founder of Modern Trends in Intellectual Property.

Richard is an active and dedicated member of the bar. His activities and awards include:

Bar Activities

  • American Bar Association, Section of Intellectual Property Law (ABA)
    • Standing International IP Task Force, Vice Chair, 2019-present
    • Patent Systems Policy Committee, Vice Chair, 2019-present
    • Patent Litigation Committee, Chair, 2017-19, Vice-Chair 2013-17
    • Technology for the Litigator Committee (ABA Section of Litigation), Co-Chair, 2010-13, Newsletter Editor-in-Chief, 2006-10
  • American Intellectual Property Law Association (AIPLA)
    • International and Foreign Laws Committee, Co-Chair, 2018-present
    • Industrial Designs Committee, Chair, 2016-18, Vice-Chair, 2014-16
  • International Trademark Association (INTA), Saul Lefkowitz Moot Court Committee
    • National Chair, 2016-17, National Vice-Chair and Bench Memo Committee Chair, 2015-16, Project Team Member, 2013-present
    • Chicago Regional Competition Chair, 2013-2015, Vice-Chair, 2011-13, Committee Member, 2006-present, Bailiff, 2000-06
    • Oral Argument Judge, Asia-Pacific Moot Court Competition (Singapore), 2019
  • Intellectual Property Owners Association (IPO)
    • Industrial Designs Committee, Member, 2013-present
  • World Intellectual Property Organization (WIPO)
    • Observer Delegate for AIPLA or IPO, Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (WIPO, Geneva) (SCT), 31st, 33rd, 34th, 36th, 37th and 40th Sessions, 2014-18
  • ICANN IP Constituency, Banner Witcoff Primary Representative, 2016-19
  • Chicago-Kent Patent Hub, part of the USPTO Patent Pro Bono Program, Volunteer, 2017-present
  • Member: ABA, AIPLA, INTA, IPO, Illinois State Bar Association, Intellectual Property Law Association of Chicago

Teaching Activities

  • Adjunct Professor, IP Litigation Pretrial Skills
    • Northwestern University (NU) School of Law, LITARB 614A, 2012-18
    • Georgetown University Law Center, LAWJ-293-07, 2004-11
  • Guest Lecturer, Fundamentals of Legal Practice, UI College of Law, 2015-16, 2018-19
  • Class panelist: NU School of Law, UI College of Law, IIT Chicago-Kent College of Law, Loyola University Chicago School of Law

 University of Illinois Alumni Activities

  • Chicago Illini Leadership Council, Chair, 2015-16, Member, 2014-present
  • Athletic Board, Member, 2012-16; Athletic Director Search Committee (Advisory), Member, 2015-16
  • College of Law Board of Visitors, Member, 2005-11
  • Campus Alumni Advisory Board, Member, 2006-12
  • Mentor, law and engineering students
  • Member: President’s Council, John E. Cribbet Society, UI Alumni Association Life Member

 Awards

  • IP Star, Managing IP magazine, 2013-19
  • “40 Illinois Attorneys Under 40 to Watch” Law Bulletin Publishing Co., 2015
  • Super Lawyers Rising Star (Illinois), 2008-15
  • Law Bulletin’s Emerging Lawyers, 2015

Richard frequently presents and writes on IP topics. His presentations and publications include:

Exemplary Presentations and Panels

  • Debater, “Constitutionality of Trade Dress Rights Following US Design Patent Expiration,” AIPLA Design Rights Bootcamp, 2019
  • Presenter, “Industrial Design Rights: Global Themes Distilled from Experiences in the United States,” IP Office of Singapore, 2019
  • Presenter, “Enforcing Designs Under US Patent, Copyright, and Trademark Law” and “Apple v. Samsung: A Case Study,” IP Protection for Industrial Designs:  An International Perspective, USPTO Global IP Academy, 2018
  • Moderator, “Perspectives on IP Brinkmanship Between the US and China in the Current Global Trade Environment, ” ABA Annual Meeting, 2018
  • Presenter, “Introduction to Design Litigation,” AIPLA Design Rights Boot Camp, 2018
  • Presenter, “Defending Design Patent Litigations: If Something’s Amiss, Move to Dismiss,” Design Day, 2017
  • Moderator, “The Wide World of Designs: Best Practices for the Procurement of Design Patents Across Borders and in the U.S.,” AIPLA Mid-Winter Institute, 2016
  • Public Speaker, “Roundtable Event on the Written Description Requirement for Design Applications,” USPTO, 2014
  • Presenter, “Design and Utility Patents, Trade Dress, and Copyright: How to Prosecute and Enforce Multiple Layers of IP Protection,” IPO Chat Channel, 2013
  • “Design Patent Functionality After Egyptian Goddess and Richardson: The Assumption of Claim Construction Dysfunction and Gumption,” AIPLA Spring Meeting, 2013
  • “Owens Poems and High Point Haikus,” Industrial Design Committee Meeting at AIPLA Annual Meeting, 2013
  • Panelist, “Computer Fraud and Abuse Act,” Northwestern School of Law, 2013
  • “Shall I Complain or Abstain about a Domain,” Banner & Witcoff Corporate IP Seminar, 2012
  • New gTLD Overview, gTLD Opposition Overview, American Marketing Association Podcasts, 2011, 2012
  • Public Panelist, “Designs in Recent Court Decisions,” Design Day, USPTO, 2010

Publications

Richard also has governmental relations and policy experience. He has prepared draft legislation, and served as a legislative extern to the Illinois House of Representatives. Richard also interned for a Congressman in Washington, D.C., during the 104th Congress.

In Chicago, Richard currently serves on the Roscoe Village Neighbors Board of Directors, and appeared with his daughter in Ballet Chicago’s The Nutcracker in 2017 and 2018. His other volunteer activities have included serving on the Chicago Public Schools Local School Council for Audubon Elementary School and the Champaign Liquor Advisory Commission, and volunteering as an instructor for Presidential Classroom for Young Americans in Washington, D.C.  Pro bono representations include counseling The Lincoln Park Zoological Society with regard to IP matters.

Office

71 South Wacker Drive,
Suite 3600
Chicago, IL 60606

T 312.463.5000
F 312.463.5001
E Emailrstockton@bannerwitcoff.com

Education

B.S. 1997, University of Illinois

J.D. 2000, University of Illinois

Bar Admissions

2000, Illinois

Court Admissions

U.S. Supreme Court

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the Northern District of Illinois

U.S. District Court for the Central District of Illinois