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Justin D. Swindells



Justin Swindells has a unique set of prosecution and litigation skills that he leverages to execute strategies for clients innovating in the electrical, software and mechanical arts. Justin’s legal knowledge is informed by his prior experience as a judicial law clerk as well as his international upbringing.

What do you focus on?

My practice is focused on protecting, leveraging and defending clients’ intellectual property rights.

My background in electrical engineering, including industry experience at Xerox and IBM, nurtured my lifelong love of technology, but it was my love of writing that drew me to become a patent attorney. I focus on understanding clients’ business objectives and drivers so that their legal spend is consistent with the level of importance of the legal work being performed.

I develop and execute patent strategies that are fully aligned with clients’ business and commercial objectives. I excel at executing strategies that involve obtaining claims that cover a competitor’s offering while steering my client’s portfolios into a dominant position.

I have secured hundreds of patents and trademarks for clients large and small by treating Examiners as allies and not adversaries. On the rare occasion that an appeal is necessary, I prevail by proffering persuasive arguments so that an invention’s merit clearly emerges.

When clients are sued or want to enforce their IP rights, I formulate a litigation strategy that maximizes the client’s leverage to facilitate a settlement. My litigation experience includes exploiting procedural rules to obtain early dismissals, advocating favorable claim constructions, locking in favorable witness and expert testimony, extracting clients from non-practicing entities, and leveraging my transactional experience to uncover case-changing problems.

I counsel clients on cease-and-desist letters and licensing demands. I also conduct due diligence on a potential sale or acquisition of an IP portfolio.

What do you see on the horizon?

Protecting software and computer-implemented inventions will continue to pose a challenge and require adept and prescient drafting skills informed by a confused array of decisions and jurisprudence.

Presentations and Publications

  • “Make Money by Exposing Secrets,” Illinois Technology, August/September 2002.
  • “How to Evaluate and Properly Rely on Patent Opinions,” Illinois Property & Technology Law Journal, vol. 15, no. 9, September 2003.
  • “Repackaging Original Trademarked Goods: Trademark Exhaustion or Consumer Confusion?” 7 Fed. Cir. Bar. J.  391 (Winter 1997).

Contact

Justin D. Swindells

Partner

Chicago

Phone: 312-425-8534


Fax: 866-842-4831

Rensselaer Polytechnic Institute, B.S.E.E., summa cum laude

Chicago-Kent College of Law, J.D., Order of the Coif

Illinois

U.S. District Court, Northern District of Illinois

U.S. District Court, Eastern District of Texas

U.S. Patent and Trademark Office

Justin Swindells is a member of the Illinois State Bar Association, the American Bar Association, and the Intellectual Property Law Association of Chicago.

Justin believes strongly in helping those whose access to legal services is barred by financial constraints. He has assisted numerous clients on a pro bono basis in a variety of matters, including obtaining trademarks, invention counseling and exploitation, and assisting veterans of the Vietnam and Afghanistan wars in obtaining combat-related special compensation disability benefits.

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