Jay M. Burgett
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Jay Burgett counsels clients on all aspects of intellectual property law, including patent, trademark, trade dress, copyright, unfair competition, and rights of publicity law. Mr. Burgett specializes in preparing and prosecuting patent applications, prosecuting trademarks (U.S. and International) and copyrights, and drafting and negotiating agreements, including licensing, settlement and employment agreements. Mr. Burgett also has significant experience in proceedings before the Trademark Trial and Appeal Board in the U.S. Patent and Trademark Office, patent and trademark licensing, mergers and acquisitions, and development of patent and trademark protection and enforcement strategies/programs.
Mr. Burgett leads the firm’s Patent Prosecution practice group. His patent work involves a variety of technical areas, including computer software, electrical circuit design, business methods, on-line commerce, wireless communication, semiconductors, navigation systems, audio amplifiers and power tools. Mr. Burgett’s non-legal professional experience includes working at Caterpillar, Inc. as an Electrical Engineer where he designed and tested electrical systems for Caterpillar mining machinery. Mr. Burgett also worked at PSA, now PSA-Dewberry, as an Electrical Engineer where he designed electrical systems for architectural projects. Mr. Burgett is trained in a number of Computer Aided Design (CAD) programs, including Pro/ENGINEER, MicroStation and AutoCAD.
Prior to joining Norvell IP, Mr. Burgett was an associate at a full service intellectual property law firm where he specialized in patent prosecution for technologically advanced companies, such as Yahoo! Inc., Harmon International, and Ryobi Ltd.
Education
- J.D., Chicago-Kent College of Law, 2005
- B.S., Electrical Engineering with Minor in Mathematics, University of Illinois at Urbana-Champaign, 2001
Admissions
- Illinois Supreme Court
- U.S. Dist. Court, N.D. Illinois
- U.S. Patent & Trademark Office
Areas of Emphasis and Experience
- Patent prosecution and patent counseling, including providing infringement and patentability opinions
- Worldwide trademark counseling, portfolio management and trademark enforcement actions
- U.S. and International patent and trademark litigation
- Proceedings before the Trademark Trial and Appeal Board in the U.S. Patent and Trademark Office
- Trademark clearance opinions
- Negotiating and preparing license, settlement and confidentiality agreements
- Advertising and marketing review
- IP due diligence
- Copyright counseling
- Rights of publicity law
- Mergers and acquisitions
- Entertainment
