165440_bioimage

Janet M. Garetto



Janet Garetto is a partner in the IP group. Her practice spans the firm’s Trademarks & Copyrights, Patents and IP Litigation practice groups. Janet counsels clients on IP issues facing their brands. In addition, she counsels clients on patent protection and litigation prevention issues with a focus on chemical and mechanical technologies.

What do you focus on?

I focus my practice on three main areas, leveraging experience with varied IP matters to help clients manage complex IP issues.

Brand Strategy and Protection

I represent companies from varied industries develop brand strategies and goals including trademark procurement, trademark portfolio development and maintenance, addressing brand misuse issues, and developing internal branding guidelines and best practices. I assist clients with day-to-day issues that arise in connection with their trademark portfolios. 

Patent Strategy

I work with clients to develop and implement patent strategies including patent procurement, patent portfolio development and maintenance, competitive patent intelligence and analysis and enforcement of patents. 

Patent Prosecution

I focus on prosecuting medical, chemical and mechanical patent matters and emphasize strategic goals for my clients’ important inventions and R&D investments. I assist clients with their day-to-day U.S. and international patent deadlines.  

In all three areas, I leverage the deep experience of our Brands & Creations, Patents and IP Litigation groups to create teams that can efficiently and effectively provide excellent service to meet client needs and goals related to their IP investments.

Representative areas of technical patent experience:

  • chemical products and processes including silicone compositions, polymer compositions, epoxy compositions, foam products
  • stretch-film products and processes
  • controlled release devices
  • herbicides
  • packaging and storage devices
  • surgical, medical and dental products
  • consumer products

What do you see on the horizon?

I am steadfast in monitoring reports about what in-house counsel want from their outside law firms. Knowing “value-add” is and will continue to be top of mind to corporate law departments, I am continually exploring creative ways to provide thoughtful legal advice in a cost-effective manner.

Publications and Presentations

  • “Exploring the Intersection of IP and Branding: Tips for Avoiding Common Pitfalls and Proactive Solutions for Minimizing Your Exposure,” Food & Beverage Exchange, Chicago, Illinois, October 3-4, 2017 (Speaker)
  • “The Effect of Court Decisions on Patent Drafting and Enforcement, and Best Strategies for Dealing with This,” 245th ACS National Meeting and Exposition, New Orleans, April 2013 (Speaker)
  • Co-taught a PLI program entitled: Fundamentals of Patent Prosecution 2012: A Boot Camp for Claim Drafting & Amendment Writing
  • “Recent Developments in Intellectual Property Law,” ABA-IPL Newsletter, which is a quarterly intellectual property publication released by the American Bar Association, (2008-present) (Contributing author)
  • “Reexamination,” IPLAC Patent Symposium, Chicago, October 2010 (Moderator)
  • “Trademark Issues in Social Media,” Nixon Peabody IP Corporate Seminar, Chicago, May 2010 (Speaker)
  • “AdvaMed 2009 The Medtech Conference,” AdvaMed Seminar for Medical Technology Industry on “Patent Reform: A Lot Has Recently Happened And Yet A Lot Is Yet To Come. Is the Oncoming Wave of Patent Reform a Tsunami?” Washington, D.C., October 2009 (Panelist/Moderator)
  • INTA Roundtable Host on “Using Multi-Jurisdiction Filing Options, namely, the Madrid System, Community Trademarks (CTMs) and Registered Community Designs (RCDs),” Chicago, October 2009 (Moderator)
  • “Intellectual Property Primer: Trademark Basics,” Nixon Peabody Webinar, Chicago, September 2009 (Speaker)
  • “Commercializing and Protecting Innovation,” University of Chicago Hapak Alumni Entrepreneurship Seminar, Chicago, July 2009. (Panelist)
  • “Initial Considerations for IP Protection from Inside and Out,” Chicago Bar Association Intellectual Property Law Committee, Chicago, April 2009 (Speaker)
  • “Pondering the Reality of a Virtual World,” Chicago Lawyer, March 2009, Cover story discussing the varying issues associated with virtual worlds, primarily Second Life; provided commentary throughout the piece on what clients are saying about virtual worlds and the associated IP-specific issues

Representative Experience

  • Represent a leading global supplier of silicone products in a diverse range of strategic patent procurement matters.
  • Represent a large, wholesale insurance brokerage firm in a variety of trademark matters.
  • Acted as lead counsel for the plaintiff, a leading medical device company, in a patent infringement it filed against a competitor. The case was settled on terms favorable to our client.
  • Represented a dental device company in a trademark infringement suit involving a trademark for dental implants. The case was settled on terms favorable to our client.

Building a new brand? IP attorney shares basic exercise to traverse starting a new trademark

FoodNavigator-USA | October 06, 2017

Chicago IP counseling and transactions partner Janet Garetto is featured in this Q&A article about IP protections for food manufacturers.

Protecting attorney-client privilege in asset sales

Chicago Daily Law Bulletin | October 15, 2015

Chicago IP Counseling & Transactions partner Janet Garetto and Chicago IP Litigation partner Russ Genet co-authored this column on protecting the valued attorney-client privilege. Click here to read the full article.

Contact

Janet M. Garetto

Partner

Chicago

Phone: 312-425-8514


Fax: 866-568-1033

Northwestern University, B.A., Chemistry

Loyola University Chicago School of Law, J.D., cum laude

Harvard University, "Leading Professional Services Firms" Executive Education Program, 2009

Illinois

U.S. Court of Appeals, Federal Circuit

U.S. District Court, Northern District of Illinois

U.S. Patent and Trademark Office

Janet was selected by her peers for inclusion in The Best Lawyers in America© 2018 in the fields of: Litigation - Intellectual Property; Litigation - Patent; Patent Law; and Trademark Law. Janet has been listed in Best Lawyers since 2013, and was the 2018 Chicago “Lawyer of the Year” for Intellectual Property.

A leader in her field, Janet was elected and served as president of the Intellectual Property Law Association of Chicago, the oldest IP law association in the United States with over 1,200 members, from 2011–12. She also served the organization as its immediate past president and co-chair of the IPLAC IP Symposium planning committee.

In 2006, Janet was named as one of the “40 Illinois Attorneys to Watch Under 40” by the Law Bulletin Publishing Company. Janet has been recognized as “Rising Star” by the Illinois Super Lawyers magazine every year from 2008–2012 and as a “Super Lawyer” in 2014.

Since 2013, Janet has been recognized as an “IP Star” by Managing Intellectual Property. She was also featured in IP Stars-Top 250 Women in IP, a new publication from Managing IP that identifies the leading female IP attorneys in the U.S. Janet is ranked as a leading Illinois lawyer for patent prosecution by IAM Patent 1000 (2014-2018)

  • Intellectual Property Law Association of Chicago, Past President (previous President, President-Elect, Vice President, Treasurer, member of Board of Managers, Chair of U.S. Patents Committee, Chair of Public Relations Committee, Chair/Vice-Chair of Membership Committee, and Co-Chair of the IPLAC IP Symposium planning committee)
  • American Bar Association
  • American Intellectual Property Law Association
  • International Trademark Association
  • Chicago Bar Association (previous legislative liaison for Intellectual Property Committee)
  • Richard Linn (Intellectual Property) American Inn of Court
  • The Executives’ Club of Chicago
  • Justinian Society of Lawyers
  • Daughters of the American Revolution
  • Member of the Friends of the Blue Island Public Library (previous Board Member of the Blue Island Public Library, 2003-2011)
  • Chicagoland Chamber of Commerce, Co-Chair of Mid-Market Forum
  • Board Member of the Chicagoland Chamber of Commerce
  • Chairperson of St. Walter Elementary School Endowment Committee
  • Board Member of the Blue Island Community Healthcare Foundation
Back to top