John E. Munro practices in the area of intellectual property law, guiding clients with the practical mindset of achieving their business goals. With considerable experience as a trusted counselor and in industry, John is able to offer a broad perspective of portfolio management and guidance through complex intellectual property issues. John prosecutes patent applications before the United State Patent and Trademark Office and assists clients in the acquisition of U.S. and foreign patent rights in diverse technologies such as software, medical devices, electro-mechanical devices, automotive systems and consumer products. He also assists clients by preparing freedom to operate and patentability opinions as well as assisting clients in the buying, selling and licensing of intellectual property assets. Additionally, John provides counseling in branding and trademark management including the acquisition and enforcement of trademarks in the U.S. and around the world.
John further has experience with complex intellectual property litigation involving patent and trademark disputes. John draws on a diverse set of skills, including technical and business knowledge from his mechanical engineering and business career prior to entering the practice of law.
Prior to entering the practice of law, John worked for a decade in various capacities with an electrical connector manufacturer and at an automotive OEM. While with the automotive OEM, John assisted in the design and launch of two new model vehicles and was a member of the engineering team located at the automotive assembly plant to deliver customer satisfaction improvement, cost optimization and resolution of critical issues as they arose.
A proud “Triple Illini,” John attended the University of Illinois as an undergraduate earning a degree in Mechanical Engineering, as a graduate student earning his Master’s in Business Administration, and again for law school.
Areas of Practice
Intellectual Property Law
- U.S. Patent and Trademark Office
- University of Illinois College of Law, J.D., magna cum laude, 2010
- University of Illinois College of Business, M.B.A., with honors, 2000
- University of Illinois, B.S., Mechanical Engineering, 1995
Duane Morris LLP
- Associate, 2019-present
Harness, Dickey and Pierce PLC
- Associate, 2017-2019
Vedder Price PC
- Associate, 2010-2017
Ford Motor Company
- Systems Engineer, 2000-2007
MacLean Power Systems
- Engineer, 1996-2998
Co-author, "The New Gold Rush to the Trademark Office," The Trademark Lawyer 2021 Annual, December 2020
- Author, "U.S. Supreme Court Refuses to Revisit Decision Upholding Design Patent Validity for Automotive Repair Parts," Duane Morris Transportation, Automotive and Logistics Blog, April 13, 2020
- Co-author, "Is Your Trademark Case Exceptional? Seventh Circuit Extends Octane Standard to the Lanham Act," Duane Morris Alert, November 11, 2019
Selected Speaking Engagements
- Clinician, "Patent Fundamentals Bootcamp 2020: An Introduction to Patent Drafting, Prosecution, and Litigation," Practising Law Institute Webinar, June 2-4, 2020
- Speaker, "U.S. Design Patents: Overview and Interesting Developments," Internal CLE
- Speaker, "Intellectual Property and Digital Legal Training Day," LEGI Team, Paris, France, December 10, 2019