Jonathan H. Urbanek
“I became a mechanical engineer because I enjoyed building machines and solving technical problems, and I became a patent lawyer so that I could help clients protect their innovations."

Jonathan H. UrbanekPartner

Chicago
120 South LaSalle Street
Suite 2100
Chicago, IL 60603VCard
312.577.7000 
312.577.7007 fax
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Education

J.D., DePaul University College of Law, 2008
B.S., Mechanical Engineering, University of Michigan, 2005

Services

Technical Areas

Bar & Court Admissions

IllinoisU.S. Patent and Trademark Office

Recognition

DePaul University College of Law
  • Editor of Articles, Notes, and Comments, DePaul Law Review
  • Intellectual Property Scholarship from Fitch, Even, Tabin & Flannery
  • Law Merit Scholarship

Jonathan H. Urbanek has a broadly based IP law practice focused on the preparation and prosecution of patent applications in the United States and abroad. Clients trust Jon to work closely with engineering teams to identify the inventive aspects of new products and prepare patent applications that persuasively differentiate the invention from the prior art. Jon frequently meets with engineers and management in person to determine where each product and its intellectual property fit into the business strategy of the client. 

Jon goes beyond the details of the patent process to advise clients on those issues that support an effective patent strategy, including freedom-to-operate decisions, product design-arounds, and patent whitespace analysis. As a result, he plays an important role in counseling clients on developing meaningful patent protection for their technologies while avoiding competitors’ patents.

Clients that Jon assists range from individual inventors and small businesses to Fortune 500 companies. Their technologies and applications are equally diverse, encompassing medical devices, irrigation, conveyor belt accessories, power systems, earth-moving equipment, packaging, food processing, communications equipment, e-commerce, computer systems, electro-mechanical devices, railcar systems, and manufacturing.



Develops patent portfolio for global manufacturer of industrial components for railroad and vehicular markets.

Works closely with manufacturer of access control systems to prepare, prosecute, and enforce intellectual property. Provides real-time IP counseling during product conception and development.

Advises global consumer products company in managing worldwide patent portfolio directed to beverages, beverage cartridges, and on-demand beverage systems.

Counsels medical device manufacturer in developing patent portfolio to protect new products and expanding patent portfolio to protect existing products.

Represents worldwide leader in irrigation technology in freedom-to-operate investigations, patent application preparation, and U.S. and international patent prosecution.

Counsels midsized manufacturer in conveyor belt industry regarding product development, patent preparation and prosecution, and non-patent IP matters.

Presentations

  • “Widening Your Moat: Using Continuation Applications to Protect Commercially Successful Products,” Fitch Even Webinar, with Mark A. Borsos, September 28, 2017.
  • “Practical Tips on Drafting Your First Patent Application,” American Intellectual Property Law Association webinar, with Conor S. Hunt, March 24, 2016.
  • "The Lure of Functional Claiming: Benefits, Pitfalls, and Recent Court Decisions," Fitch Even Webinar, with Stephen S. Favakeh, December 17, 2014.

Publications

  • “Terminal Disclaimer Best Practices,” Intellectual Property Committee of the Chicago Bar Association Young Lawyers Section, March 2, 2011.
  • “A Postmortem for Permanent Injunctions Against Business Method Patent Infringement in the Wake of eBay v. MercExchange,” DePaul L. Rev., vol. 57, no. 2, Winter 2008: 607.
  • Intellectual Property Law Association of Chicago

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