Banner & Witcoff, Ltd.

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.

From Crops to Patents and Trademarks

Banner Witcoff’s beginnings date back to 1920. Many of the firm's early clients were farmers and paid for their legal services in crops and produce. The firm’s Chicago office—its current headquarters—opened in 1937, where the firm began to represent clients like Lenox, Honeywell, and Meredith Publishing. The firm's Washington, DC, office opened in 1965. An office in Boston followed 20 years later, 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 by the likes of U.S. News’ “Best Law Firms,” Chambers and Partners, and the World Trademark Review 1000.

Go-To for IP Matters

Handling a wide range of IP matters, Banner Witcoff is among the top five law firms in Vault’s Best Intellectual Property Boutique Law Firm ranking. The firm handles everything from copyrights and trademarks to design patents and patent prosecution to PTAB litigation and section 337/ITC litigations—and much more. It works in such industries as chemistry and chemical engineering; computer technologies; internet, ecommerce, and business methods; life sciences; and medical devices. The firm is also adept at providing clients with counseling on IP strategies, patentability, and potential infringement of copyrights, patents, and trademarks.

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 of the New York Times and other print publications in electronic databases such as LexisNexis or University Microfilms International was a violation of those journalists' copyrights.

• The firm represented Buc-ee's in Buc-ee’s v. Shepherd Retail, establishing that the defendants violated the law by using logos that were confusingly similar and likely to cause dilution of Buc-ee’s logo.
• The firm’s attorneys proved that inventions can be both patented and copyrighted in Mazer v. Stein before the United States Supreme Court.
• Attorneys of the firm established that life forms are patentable in Diamond v. Chakrabarty case in the United States Supreme Court.
• Attorneys of the firm helped Amgen secure its intellectual property rights in Amgen Inc. v. Chugai Pharmaceuticals, et al., a landmark decision involving biotech patents.