Joseph F. Hetz

Partner

Overview

Joseph F. Hetz is known for his creative, value-added approach to helping clients develop portfolios that can be monetized or otherwise used to satisfy strategic needs and commercial objectives, all while meeting budget. Joe has represented clients of all sizes, from Fortune 500 companies to startups, and has prosecuted over 5,000 U.S. and foreign patent applications, many gaining national media attention and generating millions of dollars in licensing fees.

Joe focuses his practice on patent prosecution with a technical concentration in digital transformation, memory systems, data privacy and encryption, computer systems and peripherals, semiconductors, software, industrial sensors, communications systems, internet/e-commerce/business method inventions, medical devices, digital farming, and CNC and forming machinery. In addition to prosecution before the U.S. and international patent offices, Joe has been involved in reexamination, reissue, and inter partes review proceedings and is one of a handful of patent attorneys to have ever been involved in a public use proceeding.

Joe has been recognized by his peers and clients as a leader in his field, being named a "Super Lawyer," a "Leading Lawyer," and one of the world’s top 1,000 patent practitioners by Intellectual Asset Management magazine, and as an attorney with notable experience in reexamination, reissue, and IPR proceedings by The Legal 500. In addition, Joe has served as an adjunct professor of patent prosecution, most recently at Northwestern University School of Law. Prior to joining Crowell & Moring, Joe was a shareholder at Brinks Gilson & Lione, where he served on its board of directors for several years.

Joe is co-chair of Crowell’s Patent Prosecution Practice Group.

Career & Education

|
    • Northwestern University School of Law
      Adjunct Professor of Law, Patent Prosecution, Spring 2010 – Spring 2014
    • Loyola University Chicago School of Law
      Adjunct Professor of Law, Patent Prosecution, Spring 2009
    • Valparaiso University School of Law
      Adjunct Professor of Law, Patent Prosecution, Fall 2007 and 2008
    • Northwestern University School of Law
      Adjunct Professor of Law, Patent Prosecution, Spring 2010 – Spring 2014
    • Loyola University Chicago School of Law
      Adjunct Professor of Law, Patent Prosecution, Spring 2009
    • Valparaiso University School of Law
      Adjunct Professor of Law, Patent Prosecution, Fall 2007 and 2008
    • Northwestern University, B.S., With Distinction and Departmental Honors, Electrical Engineering, 1993
    • University of Michigan Law School, J.D., 1996
    • Northwestern University, B.S., With Distinction and Departmental Honors, Electrical Engineering, 1993
    • University of Michigan Law School, J.D., 1996
    • Illinois
    • U.S. Patent and Trademark Office (USPTO)
    • U.S. District Court for the Northern District of Illinois
    • Illinois
    • U.S. Patent and Trademark Office (USPTO)
    • U.S. District Court for the Northern District of Illinois
  • Professional Activities and Memberships

    • AIPLA (American Intellectual Property Law Association)
    • CARPLS (Coordinated Advice & Referral Program for Legal Services)
      Board of Directors, 2013 – 2020
    • IPLAC (Intellectual Property Law Association of Chicago)
      Vice-Chair of the U.S. Patents Committee, 2012 – 2014
      Pro-Bono Steering Committee Representative, 2013 – 2014
    • IPO (Intellectual Property Owners Association)

    Professional Activities and Memberships

    • AIPLA (American Intellectual Property Law Association)
    • CARPLS (Coordinated Advice & Referral Program for Legal Services)
      Board of Directors, 2013 – 2020
    • IPLAC (Intellectual Property Law Association of Chicago)
      Vice-Chair of the U.S. Patents Committee, 2012 – 2014
      Pro-Bono Steering Committee Representative, 2013 – 2014
    • IPO (Intellectual Property Owners Association)
Joe serves as co-chair of the Patent Prosecution Practice Group and has vast experience filing applications and seeing them through to successful grant. He sees patent procurement through a commercial lens …

IAM Patent 1000, 2022

Joseph's Insights

Speaking Engagement | 11.16.23

Intellectual Property Committee Meeting: Artificial Intelligence and Patentability

Representative Matters

  • Managing different teams for preparing and prosecuting patent applications, portfolio analysis, opinions, and general counseling for a memory device company (20+ years), a medical diagnostic company (15+ years), a telecommunications company (15+ years), and a manufacturer of recreation equipment (10+ years). 
  • Managing a patent portfolio of over 200 matters for a diversified, global supplier of infrastructure equipment with billions of dollars in revenue, with thousands of employees over dozens of operating companies in dozens of countries. 
  • Proactively mining inventions and building robust patent portfolio for many dozens of companies, large and small.
  • Inter Partes Review (IPR) Nos. IPR2014-00411/434 (U.S. Patent Nos. 8,426,813 and 8,193,496) and IPR2015-00065 (U.S. Patent No. 8,426,813). Represented Petitioner challenging patents directed to chemical leak inspection system and methods for performing inspections and detecting chemical leaks using an infrared camera system.
  • Director-Initiated Reexamination Nos. 90/006,633 and 90/006,634. Represented Patent Owner against challenges by the Director of the USPTO on early patents covering Internet browsers.
  • Public Use Proceeding for Patent Application No. 08/746,360. Represented Petitioner in a public use proceeding challenging a patent application directed to medical ultrasonic imaging using native tissue harmonics.

Joseph's Insights

Speaking Engagement | 11.16.23

Intellectual Property Committee Meeting: Artificial Intelligence and Patentability

Recognition

  • Intellectual Asset Management: IAM Patent 1000: The World’s Leading Patent Practitioners, Leading Patent Practitioner, 2014-2022
  • Law Bulletin Publishing Company: Leading Lawyers Network, Intellectual Property Lawyer, 2010-2019
  • Super Lawyers: Intellectual Property, 2009-2020 

Joseph's Insights

Speaking Engagement | 11.16.23

Intellectual Property Committee Meeting: Artificial Intelligence and Patentability

|