Mechanical Engineering Vice President
Resume:
H: 414-***-****
W: 847-***-****
email: abntp6@r.postjobfree.com
John H. Pilarski West Allis, WI 53219-28
Professional Objective:
In-house intellectual property law position with responsibilities for a business division or technology group.
Technical Skills:
Experienced in nearly all substantive facets of intellectual property law, including writing and prosecuting
U.S. and foreign patent and trademark applications; conducting patent searches and rendering
patentability, infringement, and validity opinions; conducting trademark searches and rendering trademark
availability opinions; performing due diligence investigations; negotiating, preparing and/or reviewing
intellectual property and technology licenses, and development, confidentiality, supply, and employment
agreements; prosecuting and defending trademark opposition and cancellation proceedings; asserting
and responding to cease and desist demands in patent and trademark matters; researching and
managing litigation projects; and consulting with clients about intellectual property matters.
Experience:
February, 2001 present
Illinois Tool Works Inc. (“ITW”), Glenview, Illinois.
Group Technology Counsel, reporting to Vice President – Patents and Technology. Oversight
responsibilities for all intellectual property and associated budget issues related to a number of
decentralized businesses totaling $2.3 billion in annual net sales located worldwide, currently including
the welding, soldering, printed circuit board, and reclosable packaging and zipper businesses (also
formerly involved with finishing products, adhesives and polymers, and metal fasteners businesses);
management of outside counsel involved in patent prosecution and litigation, with a very significant
litigation component (involved in approximately 15 different patent and trademark litigations); negotiated
flat fee and other fee arrangements with outside counsel; actively involved in numerous due diligence and
acquisition matters; interfaced with international businesses (including locations in China, Japan, UK,
France, Germany, and Denmark); and numerous other matters generally utilizing technical skills outlined
above.
October, 1998 February, 2001
Outboard Marine Corporation (“OMC”), Waukegan, Illinois.
Counsel – Intellectual Property (October, 1998 February, 2001), reporting to Vice President and
General Counsel. Performed many of same tasks as counsel to General Electric Company. Developed
and implemented corporate intellectual property strategy; rationalized patent portfolio and audited
strength of portfolio against major competitors; resurrected intellectual property function after lacking
leadership for 2 years; increased U.S. patent application filings from 18 in 1998 to 151 in 2000 through
patent mining efforts, while maintaining flat budget; set up patent evaluation boards based upon
technological groupings; organized annual banquet to recognize patent applicants; prepared corporate
policies and outside counsel guidelines; successfully resolved major patent infringement litigation with
Orbital Engine Company Pty. Ltd.; developed and maintained law department Intranet site; negotiated
purchase or litigated to obtain certain dot-com domain names; and interfaced with German affiliate
relative to intellectual property matters.
June, 1994 October, 1998
General Electric Company, GE Medical Systems division, Waukesha, Wisconsin.
Counsel – Intellectual Property, reporting to Senior Counsel – Intellectual Property. Managed large
patent portfolio comprising over 700 U.S. patents and 1500 foreign patents; evaluated, selected, and
141 North Water Street, #34
Milwaukee, WI 53202-6093
H: 414-***-****
W: 847-***-****
email: abntp6@r.postjobfree.com
John H. Pilarski West Allis, WI 53219-28
instructed outside counsel; selected inventions for domestic and foreign patent filings, and arranged for
filing up to 200 U.S. patent applications per year; created and implemented a product clearance discipline
for the business to proactively avoid infringement problems; instituted a patent watch to monitor patents of
competitors as issued; educated engineers and managers relative to intellectual property matters;
performed employee entrance and exit interviews to sensitize interviewees relative to safeguarding of
proprietary information; interfaced with Japanese, French, and other foreign affiliates relative to
intellectual property matters; and budgeted individual legal projects and relative to an overall budget in
excess of $ 2.7 M.
June, 1990 May, 1994
Godfrey & Kahn, S.C., Milwaukee, Wisconsin.
Associate Attorney. Practiced in the areas of patent, trademark, copyright, computer/software law, and
related litigation support in a general practice firm with start-up intellectual property law department.
June, 1987 June, 1990
Lathrop & Clark, Madison, Wisconsin.
Associate Attorney. Practiced with an emphasis on patent prosecution. Conducted patent searches
and rendered patentability opinions relative to such searches. Assisted in patent infringement matters.
Education:
May, 1987
University of Wisconsin - Madison Law School, Madison, Wisconsin, J.D.
May, 1982
Marquette, University, Milwaukee, Wisconsin, B.S. in Mechanical Engineering.
Affiliations and Honors:
• Admitted to practice law in the State of Wisconsin and the Western District of Wisconsin.
• State Bar of Wisconsin Intellectual Property Law Section: Board of Directors, 1994 - 2000; Program
Chair, 1995; Chair, 1996.
• Registered patent attorney, Reg. No. 33,028.
• Dean’s Honor List, University of Wisconsin - Madison Law School: Fall, 1984; Spring, 1986.
• Wisconsin Law Review: Associate Editor, 1986-87; Member, 1985-86.
• Member of the American Intellectual Property Law Association (“AIPLA”).
• 1987 recipient of national second place in the Nathan Burkan Memorial Competition, a writing contest
sponsored by the American Society of Composers, Authors and Publishers (“ASCAP”) pertaining to
copyright law, and a $2,000 honorarium.
• 1982 recipient of the ASME Arthur L. Williston Medal and $1,000 honorarium for best paper in
national writing contest.
• Marquette University Mechanical Engineering Award for Excellence in Materials Science.
• Finalist in Marquette University Freshman Engineering Design Competition.
• Speaker: “Practical Considerations on the Formulation of Foreign Patent Strategy,” 2001 AIPLA
Spring Meeting, May 9-11, 2001, San Francisco, CA; “Strategies for Seeking Foreign Patent
Protection,” 2004 AIPLA Annual Meeting (International and Foreign Law/PCT Issues Committee),
Washington, DC; “Cost Effective International Patent Filings,” Intellectual Property Law Association of
Chicago, March 13, 2007, Chicago, IL.
141 North Water Street, #34
Milwaukee, WI 53202-6093
H: 414-***-****
W: 847-***-****
email: abntp6@r.postjobfree.com
John H. Pilarski West Allis, WI 53219-28
• Member of GAO Patent Attorney Panel contributing to reports: (1) United States General Accounting
Office Report to Congressional Requesters, Publication GAO-02-789, International Trade: Federal
Action Needed to Help Small Businesses Address Foreign Patent Challenges, July, 2002; and (2)
United States General Accounting Office Report to Congressional Requesters, Publication GAO-03-
910, International Trade: Experts’ Advice for Small Businesses Seeking Foreign Patents, June, 2003.
Publications:
• Inventor on U.S. Patent No. 7,429,712 entitled “Gas System for Welding-Type Devices;” U.S. Patent
Publication No. 2007/0062157 entitled “Reclosable Package Having Zipper Disposed Within Loop on Front
Wall;” U.S. Patent Publication No. 200******** entitled “Multi-Level Welding Position Controller;” and U.S.
Patent Publication No. 2008/0223830 entitled “Shielding Gas Cylinder Holder for Welding-Type Devices.”
• “User Interfaces and the Idea - Expression Dichotomy, or, Are the Copyright Laws User Friendly?”
AIPLA Quarterly Journal, vol. 15, no. 4 (1987), pp. 325-353. Also appearing at ASCAP Copyright Law
Symposium, no. 37 (1990), pp. 45-83.
• “In re Lundak: The Federal Circuit Relaxes the Depositing Requirements for Microbiological Patent
Applicants,” Idea, the Journal of Law and Technology, vol. 28, no. 4 (1988), pp. 187-223.
Hobbies/Interests:
Astronomy, photography, hiking, fitness.
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