John J. McDonnell, Class of 1975

Leading patent lawyer and founding partner of McDonnell Boehnen Hulbert & Berghoff

John J. McDonnellNow retired after more than thirty years of patent practice, John McDonnell was one of the founding partners of the Chicago law firm McDonnell Boehnen Hulbert & Berghoff. He founded the firm in 1996 with four other partners from the law firm Banner & Witcoff, promising an entrepreneurial focus in client service and a collegial atmosphere for its professionals. The firm has since grown to more than eighty attorneys in three offices with an international intellectual property practice. Prior to his law firm career, McDonnell was chief patent and trademark counsel at G.D. Searle and Company, where he secured a landmark five-year extension of the Aspartame patent and directed the brand ingredient strategy for NutraSweet. He also led the diagnostic patent operations at Abbott Laboratories for five years.  In addition to his law degree from Chicago-Kent, McDonnell has a Ph.D. in Organic Chemistry from Iowa State University. McDonnell was a professor of chemistry at Illinois Institute of Technology prior to attending law school.

What would you say has been your greatest challenge?

I would say switching directions. Going from an assistant professor in Chemistry to patent law, then to a corporate patent attorney and then going into private practice. Of course, there was the challenge of setting up our own firm. A little later in years I ran out of challenges!

What has been your greatest professional achievement?

I think getting the Aspartame patent extension was a terrific value to the company at a crucial time. It was pretty unique that I managed to do that. It set in motion the idea that other products, such as pharmaceuticals, which have a long FDA regulatory review, were losing a lot of their patent life. As a result there were a lot of subsequent laws that recognized there should be an adjusted rate for that. I think the Aspartame extension sort of set the foundation for that.

Also setting up the law firm, firm McDonnell, Boehnen, Hulbert & Berghoff, and it being a success was a big achievement of mine.

What advice would you give to young attorneys just starting out today?

It depends on where the attorney is positioned. If you’re starting out as a law student, figure out how you’re going to get experience while you’re going to law school. There’s a lot of ways of doing that.  If you’re just graduating, you really have to develop an attitude of telling people what they ought to know versus what you think they want to hear.

How would you persuade a potential student to attend Chicago-Kent?

One, it does really prepare you for passing the bar. Two, you’re going to develop excellent writing skills. And three, you’re located in a city full of opportunities to get legal experience.

What would people find most surprising about you?

My wife and I just celebrated our 50th wedding anniversary and took the family on an Alaskan cruise. I’m really enjoying being a grandfather! My wife and I also both have dual citizenship in Ireland.