Attorneys

EDUCATION:

B.S., Electrical Engineering
University of Illinois at
Urbana-Champaign
1990

 

J.D., Chicago-Kent
College of Law
Illinois Institute of Technology
1995


B. Joe Kim


 

B. Joe Kim is a partner with Greer, Burns & Crain in Chicago. His practice focuses on intellectual property law, particularly domestic and foreign patent and trademark prosecution. Mr. Kim has prosecuted hundreds of U.S. and foreign patents in technical areas such as computer disk devices, LCD panels, computer network devices and software, pneumatic tires and power tools.

 

He has extensive experience writing opinions on patent infringement, validity and patentability, and trademark infringement, and has negotiated substantial settlements relating to patents and trademarks. Mr. Kim has litigated a variety of intellectual property disputes in the federal district courts, and has conducted many successful appeals to the Board of Patent Appeals and Interferences.

 

Mr. Kim received a J.D. from Chicago-Kent College of Law and a B.S. in Electrical Engineering from the University of Illinois at Urbana-Champaign.

 

Prior to attending law school, Mr. Kim worked as an electrical engineer in the nuclear power industry, and served in the U.S. Army before attending college.

 

 

Experience

  • U.S. and foreign patent and trademark prosecution
  • Patent appeals
  • Opinions on patent infringement, validity and patentability
  • Trademark oppositions
  • Patent and trademark litigation
  • Engineer with a nuclear power plant consulting firm
  • U.S. Army

 

Bar Memberships

  • U.S. Patent and Trademark Office
  • Supreme Court of the State of Illinois
  • U.S. District Court for the Northern District of Illinois
  • U.S. Court of Appeals for the Federal Circuit

 

Professional Affiliations

  • Intellectual Property Law Association of Chicago (IPLAC)
  • American Intellectual Property Law Association

 

Example Technical Fields

  • Coffee Roasters
  • Computer Disk Storage Devices
  • Computer Peripheral Server Devices
  • Computer System and Circuits
  • Control Network Protocols
  • Counter-Top Electric Ovens
  • Diving Equipment
  • Electric Motors
  • Electronic Information Delivery Systems and Devices
  • Fasteners
  • Hats
  • High Voltage Capacitors
  • HVAC Control Systems
  • LCD Panels
  • Magnetic Disk Drives
  • Matrix Isolation Analysis Equipment
  • Network Devices
  • Optical Disk Drives
  • Personal Care Appliances
  • Power Supply for Power Tools
  • Railway Maintenance Equipment
  • Rotary Power Tools
  • Semiconductor Devices
  • Software for Internet and Mobile Devices
  • Telecommunications Systems and Devices
  • TFT Devices
  • TV Monitoring Devices

 

Lectures

  • USPTO Programs for Expediting Patent Prosecution
  • Prosecution Strategies Based on Inner Workings of USPTO
  • Designing Around Exercise
  • When Is a Software Claim NOT Directed to an Abstract Idea?
  • Avoiding Means-Plus-Function Interpretation
  • Post Alice Survey and Practice Tips
  • 2015 Updates on Alice Abstract Idea Exception and Analysis of Application Allowance Rates
  • Understanding Restriction and Election of Species Requirements
  • Responding to Alice Abstract Idea Rejections
  • Strategies for Responding to Office Action Rejections from the USPTO
  • Understanding Patent Infringement Opinions
  • False Patent Marking