Chicago-based IP boutique firm Banner & Witcoff is unique
not only for its status as a top firm in its field, but also for
its role in shaping IP law by having represented defendants in
groundbreaking Supreme Court cases. The firm, which has additional
offices in Boston, Portland and Washington, DC, continues to be
involved in developments in its field by representing top companies
like Allstate Insurance, Bank of America, Kimberly-Clark,
Microsoft, Nike, and Toshiba.
From Crops to Patents and Trademarks
Though it's been known as Banner & Witcoff since 1996, the
firm's beginnings date all the way back to 1920. Back in those
days, many of the firm's early clients were farmers and paid for
their legal services in crops and produce. Its Chicago office, the
location of its current headquarters, opened in 1937, where the
firm began to represent clients like Lenox, Honeywell and Meredith
Publishing. The firm's Washington, D.C. office opened in 1965. An
office in Boston followed 20 years later, in 1985, and its fourth
office, in Portland, opened in 1997.
In 1978, name founder Don Banner was appointed Commissioner of
the United States Patent and Trademark Office, kicking off a
tradition of expertise in USPTO policies among firm attorneys. This
expertise has been widely recognized; in 2012, Banner & Witcoff
made the National Law Journal's"Intellectual Property Hot List,"
and was ranked a Top IP firm by Chambers and Partners and a top
trademark firm by the World Trademark Review 1000.
A Role in History
In 1980, Banner & Witcoff won verdicts for defendants in the
history-making case Diamond v. Chakrabarty, which established that
the bacterium a General Electric engineer developed to break down
crude oil-and living, genetically-altered organisms in
general-could be patented. The firm made history again in 2001 with
New York Times v. Tasini, in which the court ruled that publishing
articles by freelance journalists that were licensed specifically
for print editions ofthe New York Times and other print
publications in electronic databases such as LexisNexis or
University Microfilms International was a violation of those
True to its values as an IP firm, Banner & Witcoff stands at
the forefront of innovation and has a special history in the field
of computer technology. Founder Sheldon Witcoff was the first
examiner of patent applications for electronic computers for the
USPTO in 1949. In 1973, the firm participated in a nine-month
trial, one of the longest in history, to prove that John Atanasoff
was the first inventor of the electric computer. Banner &
Witcoff also pioneered the use of computers in courtroom pre-trial
discovery and document management in 1968.
Making and Breaking Records
For the 12th consecutive year, Banner & Witcoff obtained
more U.S. design patents than any other law firm in the United
States. In 2014, the firm procured 790 U.S. design patents on
behalf of its clients, including Electrolux, Microsoft, and Nike.
The firm's rate and scale of patent procurement far outstrips those
of its competitor firms. In the past five years, the firm procured
more than 3,500 U.S. design patents, while its closest competitor
procured fewer than 1,300 in the same period.