Janet M. Garetto
Partner

Practice Areas

Experience

Janet Garetto’s practice is devoted to intellectual property counseling and litigation. Her transactional experience in the patent area encompasses drafting and prosecuting patent applications in various chemical and mechanical areas and preparing infringement, invalidity, and due diligence opinions. She has prosecuted patents and provided counseling to clients in a variety of technical areas, including chemical products and processes, stretch-film products and processes, epoxy compositions, foam products and processes, herbicides, controlled release devices, packaging and storage devices, consumer products such as furniture, surgical, medical and dental products, and biomechanical devices. Janet has experience with the daily management of the patent portfolios of her clients and the other patent-related issues that impact her clients. 

Janet’s transactional experience in the trademark area encompasses general counseling regarding trademark matters, trademark prosecution, and handling proceedings before the Trademark Trial and Appeal Board. She has assisted companies from diverse industries with trademark and trade dress matters including in the fields of publishing and printing, insurance, banking, computer software and systems integration, Internet and e-commerce, supply chain management, dental goods, coin counting, restaurant services, and a host of consumer products. Janet has experience with the daily management of the trademark portfolios of her clients and the other trademark-related issues that impact her clients. 

When litigation or other forms of dispute resolution is necessary, Janet’s trial experience includes preparing fact and expert witnesses for trial and drafting motions. Her experience in patent and trademark litigation includes drafting motions and pretrial documents, taking and defending depositions, preparing fact and expert witnesses for depositions, working with technical experts, handling a variety of aspects of discovery and settlement, and supervising junior attorney and paralegal assignments.

Janet has been an active follower of the recent proposed changes at the U.S. Patent Office. In 2006, Janet chaired the U.S. Patents Committee for the Intellectual Property Law Association of Chicago (IPLAC). In that capacity, she spearheaded and supervised the two comment letters that IPLAC submitted to the U.S. Patent Office regarding the proposed changes to the rules on continuing applications and on examination of claims. In 2007, Janet actively followed the final rule changes at the U.S. Patent Office. Janet coordinated Nixon Peabody’s efforts to provide educational opportunities for its clients by spearheading firm-wide webinar presentations on the rule changes. 

A leader in her field, Janet was recently elected (May 2009) as Vice-President of the Intellectual Property Law Association of Chicago. In these capacities, she is currently leading the effort to create an online membership directory for this 1,000+ person intellectual property association and is looking forward to serving as an Officer of IPLAC for the 2009-2010 term. In 2006, Janet was named as one of the “40 Illinois Attorneys to Watch Under 40” by the Law Bulletin Publishing Company. In 2008, she was honored as a Rising Star by the Illinois Super Lawyers magazine.

Publications and Presentations

• “AdvaMed 2009 The Medtech Conference,” AdvaMed Seminar for Medical Technology Industry on “Patent Reform: A Lot Has Recently Happened And Yet A Lot Is Yet To Come. Is the Oncoming Wave of Patent Reform a Tsunami?” Washington, D.C., October 2009. (Panelist/Moderator)
• INTA Roundtable Host on “Using Multi-Jurisdiction Filing Options, namely, the Madrid System, Community Trademarks (CTMs) and Registered Community Designs (RCDs),” October 2009. (Moderator)      
• “Intellectual Property Primer: Trademark Basics,” Nixon Peabody Webinar, Chicago, September 2009. (Speaker) 
• “Commercializing and Protecting Innovation,” University of Chicago Hapak Alumni Entrepreneurship Seminar, Chicago, July 2009. (Panelist)
• “Initial Considerations for IP Protection from Inside and Out,” Chicago Bar Association Intellectual Property Law Committee, April 2009. (Speaker)
• “Pondering the Reality of a Virtual World,” Chicago Lawyer, March 2009, Cover story discussing the varying issues associated with virtual worlds, primarily Second Life. Provided commentary throughout the piece on what clients are saying about virtual worlds and the associated IP-specific issues.
• “AdvaMed 2008 The Medtech Conference,” AdvaMed Seminar for Medical Technology Industry on “IP Issues for Emerging Companies” Washington, D.C., September 2008. (Panelist)
• “New USPTO Rules -- How Will They Affect Your Business,” Nixon Peabody Webinars, Chicago, September 2007. (Speaker)
• “Developing Corporate Intellectual Property Policies,” ABA Section of Intellectual Property Law 2007 Seminar entitled “Practical Tips on Intellectual Property Law:  Intellectual Property Transactions and Management,” Chicago, September 2007. (Speaker and Author)
• INTA Roundtable Host on “Developments in Fraud Upon the U.S. Patent and Trademark Office,” April 2006. (Moderator)  
• “Issues Associated with Outsourcing of Patent Prosecution Work,” IP Litigator, January/February 2006, Vol. 12, No. 1. 
• “Brand Issues in Starting a New Pizzeria,” PMQ Pizza Magazine, July-August 2005. 
• “Issues Associated with Outsourcing of Patent Prosecution Work,” AIPLA 2005 Advanced Patent Prosecution Seminar, Chicago, June 2005. (Speaker and Author)
• “Protecting Trademarks and Servicemarks,” Food Technology, February 2003, Vol. 57, No. 2.
• “Preventing Loss of Federal Trademark and Service Mark Rights,” Jenkens & Gilchrist Corporate Counsel Seminar, Chicago, October 2002. (Speaker)
• “Preventing Loss of Federal Trademark and Service Mark Rights,” Intellectual Property Today, September 2002, Volume 9, No. 9.
• Contributor to “Federal Circuit Review of Markman Issues (2001),” The Litigation Committee (2001-02) of the Intellectual Property Law Association of Chicago (IPLAC).
• “Protecting Your Company’s Website by Obtaining Trademark, Domain Name, and Copyright Registrations,” Lewis University Graduate School of Management Seminar, Oak Brook, Illinois, July 2000.
• Contributing Author, “Patent Law Handbook,” 1999-2000 Edition.
• “Registering Internet Domain Names with the PTO,” Arnold White & Durkee Corporate Counsel Seminar, Chicago, March 1998. (Speaker)

Admissions

Janet is admitted to practice in Illinois and before the U.S. Court of Appeals for the Federal Circuit, the U.S. District Court for the Northern District of Illinois, and the United States Patent and Trademark Office.

Education

Northwestern University, B.A., Chemistry
Loyola University Chicago School of Law, J.D., cum laude
Harvard Business School, Executive Program

Affiliations

• Intellectual Property Law Association of Chicago, current Vice-President (previous Treasurer, member of Board of Managers, Chair of U.S. Patents Committee, Chair of Public Relations Committee and Chair/Vice-Chair of Membership Committee)
• American Bar Association
• American Intellectual Property Law Association
• International Trademark Association, current member of the Design Rights Subcommittee 
• Chicago Bar Association (previous legislative liaison for Intellectual Property Committee)
• Richard Linn (Intellectual Property) American Inn of Court
• The Executives’ Club of Chicago
• Justinian Society of Lawyers
• Daughters of the American Revolution
• Board Member for the Blue Island Public Library (2003-present)
• Founding Member, Southside Alliance Networking Group
• Chicagoland Chamber of Commerce, Co-Chair of Mid-Market Forum