Dunstan H. Barnes Ph.D., Shareholder
312.775.8000
Dunstan H. Barnes is a Shareholder at McAndrews and practices in all areas of intellectual property law with an emphasis on protecting and analyzing design rights. His work in that area includes drafting and prosecuting design patent applications and conducting opinion work and due diligence investigations. In addition, Dunstan has considerable experience drafting and prosecuting utility patent applications and trademark applications across a range of technological fields and industries.
As a practitioner, Dunstan is an effective communicator and an outstanding writer. He is particularly skilled at communicating complex, abstract technical concepts clearly and compellingly. He is a skilled intellectual property advocate and adviser who helps his clients protect their innovations, particularly new designs, in the U.S. and in global marketplaces. He helps his clients acquire and protect their IP rights, as well as navigate the world of existing rights. In 2021, Dunstan was honored as a 40 Under Forty attorney in Illinois. In recommending him for the honor, a senior IP counsel at a major international pharmaceutical company said of Dunstan, “I consider him to be one of the top 10 design patent attorneys in the United States, period.”
Dunstan is the immediate past chair of the American Intellectual Property Law Association (AIPLA) Design Rights Committee and former chair of the American Bar Association (ABA) Design Rights Committee. He has been an invited speaker at conferences, including the IPO Annual Meeting, AIPPI World Congress, AIPLA Annual Meeting, ABA-IPL Spring Meeting, and USPTO Design Day.
In his spare time, Dunstan enjoys football (soccer) in pretty much any weather, bass guitar, poker, and keeping up with his two energetic young children.
EDUCATION
- Chicago-Kent College of Law, J.D., magna cum laude, Order of the Coif, 2013
- University of Cambridge, Ph.D., Materials Science & Metallurgy (Biomaterials), 2010
- University of Oxford, M.Eng., Materials Science & Metallurgy, 2006
BAR ADMISSIONS/REGISTRATIONS
- Illinois
- U.S. District Court for the Northern District of Illinois
- U.S. Patent and Trademark Office
Education
- Chicago-Kent College of Law, J.D., magna cum laude, Order of the Coif, 2013
- University of Cambridge, Ph.D., Materials Science & Metallurgy (Biomaterials), 2010
- University of Oxford, M.Eng., Materials Science & Metallurgy, 2006
Practices
- Design Rights
- IP Transactions
- Patent Prosecution
- Trademarks & Copyrights
Bar Admissions/Registrations
- Illinois
- U.S. District Court for the Northern District of Illinois
- U.S. Patent and Trademark Office
Industries
- Chemical
- Industrial & Mechanical
Publications
- Design Rights: Functionality and Scope of Protection – U.S. Chapter (co-authored with Christopher V. Carani), Wolters Kluwer 2022; forthcoming, AIPPI Law Series. Volume VII.
- International Comparative Legal Guides: Designs 2022 – U.S. Chapter (co-authored with Christopher V. Carani and Sarine R. Hagopian),
- International Comparative Legal Guides: Copyright 2022 – U.S. Chapter (co-authored with Christopher V. Carani, Sarine R. Hagopian, and Amber J. Carpenter),
- Patent Infringement: Un-blurring the lines (2021) Lexology (co-authored with Christopher V. Carani). View File.
- International Comparative Legal Guides: Designs 2021 – U.S. Chapter (co-authored with Christopher V. Carani and Sarine R. Hagopian),
- les Nouvelles, Special Issue: LESI Design Study – USA (2020) (co-authored with Christopher V. Carani and Perry Saidman),
- Designs: A Global Guide 2020 – Designs – protecting fashion in the United States with IP rights (2020) World Trademark Review, published by Globe Business Media Group – IP Division (co-authored with Christopher V. Carani).
- Designs: A Global Guide 2019 – Graphical user interfaces (2019) World Trademark Review, published by Globe Business Media Group – IP Division) (co-authored with Christopher V. Carani). View File.
- Designs: A Global Guide 2018 – Graphical user interfaces (2018) World Trademark Review, published by Globe Business Media Group – IP Division (co-authored with Christopher V. Carani). View File.
- Design Rights: Functionality and Scope of Protection – U.S. Chapter (co-authored with Christopher V. Carani), Wolters Kluwer October 2017, AIPPI Law Series. Volume III. View File.
- So Your Client Wants to Open an Illinois Cannabis Dispensary? (October 2017) Illinois Bar Journal. View File.
- Designs: A Global Guide 2017 (Protecting and enforcing design rights: United States, World Trademark Review, published by Globe Business Media Group – IP Division) (co-authored with Christopher V. Carani). View File.
- The Modern Age of Design Rights (ABA Tort Trial and Insurance Practice – Committee News – Spring 2016). View File.
- Parodies and Trademark and Copyright Infringement (June 19, 2014) Corporate Counsel. View File.
- Case or Controversy Exists Where Generic Manufacturer Seeks Declaratory Judgment of Non-Infringement of Orange Book-Listed Patent Disclaimed by Brand Manufacturer, Orange Book Blog (April 14, 2015). View File.
- Will the Supreme Court Clarify Which “Computer-Implemented Inventions” Are Patent Eligible?, InsideCounsel (February 3, 2014). View File.
- Big Brother is Watching You (And Your Family, Too): Familial DNA Searches in Criminal Investigations, 50 Crim. Law Bulletin 68 (2014).
- Divided Federal Circuit Panel Strikes Down Galderma’s Patents as Obvious—in Shifting the Burden of Production Regarding Secondary Considerations to the Patentee, Did the Majority in Fact Shift the Burden of Persuasion, Too?, Orange Book Blog (December 18, 2013). View File.
- IP: Fresenius USA, Inc. v. Baxter International, Inc. headed to the Supreme Court?, Inside Counsel (December 10, 2013). View File.
- Cadence Prevails Over Exela in OFIRMEV® (Acetaminophen) ANDA Litigation, Orange Book Blog (December 2, 2013). View File.
- Technically Speaking, Does It Matter? An Empirical Study Linking The Federal Circuit Judges’ Technical Backgrounds To How They Analyze The Section 112 Enablement And Written Description Requirements, 88 Chi.-Kent L.R. 971 (2013).
- Biocompatibility of Ceramics, ASM Handbook, Vol. 23, Materials for Medical Devices (2012).
- Using Scratch Testing to Measure the Adhesion Strength of Calcium Phosphate Coatings Applied to Poly (Carbonate Urethane) Substrates, 6 Journal of the Mechanical Behavior of Biomedical Materials. 128 (2012).
- Shelf Life and Chemical Stability of Calcium Phosphate Coatings Applied to Poly Carbonate Urethane Substrates, 1 Journal of Biotechnology and Biomaterials 112 (2011).
- Biomimetic Calcium Phosphate Coatings for Polymeric Artifical Spinal Disc Implants, 1 Bioceramics Development and Applications,, Article ID D101111 (2010).
- Piezospectroscopic Measurement of the Stress Field Around an Indentation Crack Tip in Ruby Using SEM Cathodoluminescence, 28 Journal of the European Ceramic Society 2049 (2008).
Presentations
- Demystifying Design Rights and the Hague System, IPO webinar, November 4, 2021
- Design Patents, National Council on Patent Practicum webinar, August 12, 2021
- Functionality vs. Functionality, Chicago Bar Association webinar, May 4, 2021
- U.S. and International Design Patent Prosecution and Litigation Update, ABA-IPL Spring Virtual, April 16, 2021
- You Can Never Be Overdressed or Overeducated: Overlapping Design Rights in Fashion, ABA-IPL Spring Virtual, April 14, 2021
- Your patented designs have been copied: now what?, IPO Annual Meeting, September 21-24, 2020
- Recent Developments in Design Patent Law, AIPLA webinar, January 15, 2020
- The State of Design Rights, AIPLA Annual Meeting, Oct. 24, 2019 (Fort Washington, MD)
- USPTO Examiners Afternoon, April 24, 2019 (Alexandria, VA)
- Design Rights in Times of Globalization: U.S. Perspective, ABA-IPL Spring 2019, April 11, 2019 (Arlington, VA)
- Report from the Front Line: A brief review of U.S. district court decisions over the past year, USPTO Design Day 2018, April 25, 2018 (Alexandria, VA)
- The Importance of GUI Protection , 38th SCT: Information Session on Graphical User Interface (GUI), Icon and Typeface/Type Font Designs, October 31, 2017 (Geneva, Switzerland)
- Panel Session VIII on Partial Designs, AIPPI 2017 Sydney World Congress, October 16, 2017 (Sydney, Australia)
- Recent Developments in Design Patent Law, 2017 AIPPI-U.S. Global IP Educational Forum, July 13, 2017 (Chicago, IL)
- Recent Developments in Design Patent Law, IPO U.S. Patent Law Committee Meeting, February 17, 2017 (Webinar)
- Recent Federal Circuit Design Patent Cases and the FUBAR Functionality Standard, Chicago Bar Association: Intellectual Property Committee CLE, Jan. 24, 2017 (Chicago, IL)
Honors & Awards
- Super Lawyers (Intellectual Property Law) (Illinois Rising Star 2017-2022)
Professional Affiliations
- American Bar Association (ABA) – Chair, Design Rights Group
- American Intellectual Property Law Association (AIPLA) – Vice Chair, Industrial Designs Committee
- Intellectual Property Law Association of Chicago (IPLAC) – Board Member
- Design Rights: Functionality and Scope of Protection – U.S. Chapter (co-authored with Christopher V. Carani), Wolters Kluwer 2022; forthcoming, AIPPI Law Series. Volume VII.
- International Comparative Legal Guides: Designs 2022 – U.S. Chapter (co-authored with Christopher V. Carani and Sarine R. Hagopian),
- International Comparative Legal Guides: Copyright 2022 – U.S. Chapter (co-authored with Christopher V. Carani, Sarine R. Hagopian, and Amber J. Carpenter),
- Patent Infringement: Un-blurring the lines (2021) Lexology (co-authored with Christopher V. Carani). View File.
- International Comparative Legal Guides: Designs 2021 – U.S. Chapter (co-authored with Christopher V. Carani and Sarine R. Hagopian),
- les Nouvelles, Special Issue: LESI Design Study – USA (2020) (co-authored with Christopher V. Carani and Perry Saidman),
- Designs: A Global Guide 2020 – Designs – protecting fashion in the United States with IP rights (2020) World Trademark Review, published by Globe Business Media Group – IP Division (co-authored with Christopher V. Carani).
- Designs: A Global Guide 2019 – Graphical user interfaces (2019) World Trademark Review, published by Globe Business Media Group – IP Division) (co-authored with Christopher V. Carani). View File.
- Designs: A Global Guide 2018 – Graphical user interfaces (2018) World Trademark Review, published by Globe Business Media Group – IP Division (co-authored with Christopher V. Carani). View File.
- Design Rights: Functionality and Scope of Protection – U.S. Chapter (co-authored with Christopher V. Carani), Wolters Kluwer October 2017, AIPPI Law Series. Volume III. View File.
- So Your Client Wants to Open an Illinois Cannabis Dispensary? (October 2017) Illinois Bar Journal. View File.
- Designs: A Global Guide 2017 (Protecting and enforcing design rights: United States, World Trademark Review, published by Globe Business Media Group – IP Division) (co-authored with Christopher V. Carani). View File.
- The Modern Age of Design Rights (ABA Tort Trial and Insurance Practice – Committee News – Spring 2016). View File.
- Parodies and Trademark and Copyright Infringement (June 19, 2014) Corporate Counsel. View File.
- Case or Controversy Exists Where Generic Manufacturer Seeks Declaratory Judgment of Non-Infringement of Orange Book-Listed Patent Disclaimed by Brand Manufacturer, Orange Book Blog (April 14, 2015). View File.
- Will the Supreme Court Clarify Which “Computer-Implemented Inventions” Are Patent Eligible?, InsideCounsel (February 3, 2014). View File.
- Big Brother is Watching You (And Your Family, Too): Familial DNA Searches in Criminal Investigations, 50 Crim. Law Bulletin 68 (2014).
- Divided Federal Circuit Panel Strikes Down Galderma’s Patents as Obvious—in Shifting the Burden of Production Regarding Secondary Considerations to the Patentee, Did the Majority in Fact Shift the Burden of Persuasion, Too?, Orange Book Blog (December 18, 2013). View File.
- IP: Fresenius USA, Inc. v. Baxter International, Inc. headed to the Supreme Court?, Inside Counsel (December 10, 2013). View File.
- Cadence Prevails Over Exela in OFIRMEV® (Acetaminophen) ANDA Litigation, Orange Book Blog (December 2, 2013). View File.
- Technically Speaking, Does It Matter? An Empirical Study Linking The Federal Circuit Judges’ Technical Backgrounds To How They Analyze The Section 112 Enablement And Written Description Requirements, 88 Chi.-Kent L.R. 971 (2013).
- Biocompatibility of Ceramics, ASM Handbook, Vol. 23, Materials for Medical Devices (2012).
- Using Scratch Testing to Measure the Adhesion Strength of Calcium Phosphate Coatings Applied to Poly (Carbonate Urethane) Substrates, 6 Journal of the Mechanical Behavior of Biomedical Materials. 128 (2012).
- Shelf Life and Chemical Stability of Calcium Phosphate Coatings Applied to Poly Carbonate Urethane Substrates, 1 Journal of Biotechnology and Biomaterials 112 (2011).
- Biomimetic Calcium Phosphate Coatings for Polymeric Artifical Spinal Disc Implants, 1 Bioceramics Development and Applications,, Article ID D101111 (2010).
- Piezospectroscopic Measurement of the Stress Field Around an Indentation Crack Tip in Ruby Using SEM Cathodoluminescence, 28 Journal of the European Ceramic Society 2049 (2008).
- Demystifying Design Rights and the Hague System, IPO webinar, November 4, 2021
- Design Patents, National Council on Patent Practicum webinar, August 12, 2021
- Functionality vs. Functionality, Chicago Bar Association webinar, May 4, 2021
- U.S. and International Design Patent Prosecution and Litigation Update, ABA-IPL Spring Virtual, April 16, 2021
- You Can Never Be Overdressed or Overeducated: Overlapping Design Rights in Fashion, ABA-IPL Spring Virtual, April 14, 2021
- Your patented designs have been copied: now what?, IPO Annual Meeting, September 21-24, 2020
- Recent Developments in Design Patent Law, AIPLA webinar, January 15, 2020
- The State of Design Rights, AIPLA Annual Meeting, Oct. 24, 2019 (Fort Washington, MD)
- USPTO Examiners Afternoon, April 24, 2019 (Alexandria, VA)
- Design Rights in Times of Globalization: U.S. Perspective, ABA-IPL Spring 2019, April 11, 2019 (Arlington, VA)
- Report from the Front Line: A brief review of U.S. district court decisions over the past year, USPTO Design Day 2018, April 25, 2018 (Alexandria, VA)
- The Importance of GUI Protection , 38th SCT: Information Session on Graphical User Interface (GUI), Icon and Typeface/Type Font Designs, October 31, 2017 (Geneva, Switzerland)
- Panel Session VIII on Partial Designs, AIPPI 2017 Sydney World Congress, October 16, 2017 (Sydney, Australia)
- Recent Developments in Design Patent Law, 2017 AIPPI-U.S. Global IP Educational Forum, July 13, 2017 (Chicago, IL)
- Recent Developments in Design Patent Law, IPO U.S. Patent Law Committee Meeting, February 17, 2017 (Webinar)
- Recent Federal Circuit Design Patent Cases and the FUBAR Functionality Standard, Chicago Bar Association: Intellectual Property Committee CLE, Jan. 24, 2017 (Chicago, IL)
- Super Lawyers (Intellectual Property Law) (Illinois Rising Star 2017-2022)
- American Bar Association (ABA) – Chair, Design Rights Group
- American Intellectual Property Law Association (AIPLA) – Vice Chair, Industrial Designs Committee
- Intellectual Property Law Association of Chicago (IPLAC) – Board Member
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