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Joel W. Benson

Practice Summary

Mr. Benson has more than twenty-five years of trial and appellate litigation experience in cases involving patents, trade secrets, trademarks, contracts and related issues concerning the UCC.

Mr. Benson has negotiated and prepared patent and trade secret licenses, joint development agreements, confidential disclosure agreements, employment agreements for inventors and invention assignments worldwide.

Since being registered to prosecute patent applications in the United States in 1977, Mr. Benson has prepared and prosecuted hundreds of patent applications. He has obtained patents in the United States, under the Patent Cooperation Treaty, in the European Patent Office and in foreign countries worldwide.

His experience also includes conducting interference proceedings in the U.S. Patent and Trademark Office, as well as conducting patent infringement and validity investigations. Mr. Benson has conducted intellectual property seminars for technical and management personnel of corporate clients and has consulted with clients concerning diverse intellectual property issues. He is responsible for managing substantial patent portfolios for his clients.

Honors/Distinctions
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2007, 2009-2012 
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009-2011
Representative Matters
Licensing
  • Mr. Benson has represented many clients in negotiating and obtaining patent licenses from the Lemelson Foundation.
  • In 2001, he implemented what may be one of the first Internet patent auctions in the U.S., offering licenses and assignment rights for a patent that was ultimately assigned.
Litigation
  • In the case of Bilski v. Doll, cert. granted, 77 U.S.L.W. 3656 (June 1, 2009) (No. 08-964), Mr. Benson represented Accenture and Pitney Bowes Inc. as amici curiae on petition for certiorari, arguing that Supreme Court precedent counsels a flexible approach to application of 35 U.S.C. § 101 for process patent eligibility. By contrast, the Federal Circuit's "machine-or-transformation" test unnecessarily ties the process category of section 101 to one of the other categories of that section, such as the "machine'" or "manufacture" category and improperly anchors the standard in the 20th Century.
  • From 2002 - 2004, Mr. Benson managed extensive discovery to protect confidentiality and other interests of third party companies in many patent infringement law suits brought by Solaia Technology LLC in the Northern District of Illinois.
  • In the case of Discovision v. DMI (1997-1998), Mr. Benson represented the defendant and conducted discovery of validity and non-infringement issues for two asserted patents. He prepared successful Markman briefs and was lead counsel at trial with respect to these patents. The patents were found not infringed.
Memberships & Affiliations
  • American Bar Association
  • American Intellectual Property Law Association
  • Chicago Bar Association
Non-Legal Experience
  • Bell Laboratories (now Lucent) and Western Electric
    Programmer and Design and Development Engineer, 1971-1975
    Mr. Benson's responsibilities included telecommunication projects ranging from electronic toll switching to implementation of cell phones in the U.S. More recently, Mr. Benson has studied microprocessors, micro controllers, Internet systems and related software and applications. His experience includes such technology as computers, computer programming, HTML, Internet applications and business methods, electronic and solid state devices for all applications and manufacturing processes.
Press Releases