J. William Frank, III has been involved in all aspects of intellectual property law as both inside counsel and outside counsel since 1970. Bill provides strategic counseling in IP matters, including resolution of disputes using alternative dispute resolution, the preparation of opinions, negotiation of IP agreements, and the preparation and prosecution of patent and trademark applications. He has represented clients in a wide array of technology areas, including medical and surgical devices and methods, cancer therapy, polymer chemistry, printing and telecommunications.
Bill is trained as a mediator and arbitrator. He is on the Commercial Arbitration Panel and the Mediation Panel for the American Arbitration Association (AAA), and the Distinguished Panel of Neutrals for the International Institute for Conflict Resolution and Prevention (CPR). Bill is a Fellow of the Chartered Institute of Arbitrators in London (FCIArb). Bill has acted as both a sole arbitrator and as a member of a three arbitrator panel in complex cases. He is also on the arbitration and mediation panels for the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. Bill is on the Mediation Panel for the Court of Appeals, Federal Circuit, and he is a panel member acting as a mediator in numerous state court matters.
As General Patent Counsel for S. C. Johnson & Son, Inc., Bill was instrumental in building a valuable IP portfolio, resolving IP disputes in the U.S. and abroad through both settlement and litigation, creating an IP strategic plan, negotiating IP agreements of all types, and advising on all aspects of U.S. and multicountry litigation. He has significant U.S. and international patent, industrial design, and trademark experience, including personal participation in numerous oppositions at the European Patent Office.
In private practice, Bill has represented clients in patent infringement matters, provided formal opinion letters regarding non-infringement and patent validity and enforceability. Bill has also acted as an expert both as a testifying and non-testifying expert. Bill has represented clients in numerous matters (both patent and trademark) before the United States Patent and Trademark Office.
Bill was on the Board of Directors of AIPLA from 1994-97, was the AIPLA representative to the National Council of Intellectual Property Law Associations from 2001-2002 and was named a Fellow of the AIPLA in 2003.
Professional Associations
- American Intellectual Property Law Association
- Chair, Alternative Dispute Resolution Committee 2012
- Vice-Chair, Nomination Committee 2012
- Chair, Fellows Committee, 2005-2007
- Vice-Chair, Committee on Local Associations, 2002-2004
- Chair, Membership Committee, 1998-2000
- Member, Board of Directors, 1994-1997
- Chair, Industrial Designs Committee, 1992-1993
- American Bar Association
- Member, Alternative Dispute Resolution, Science & Technology Law and Intellectual Property Law Sections
- Chair ADR Section Intellectual Property Committee, 2010-2013
- Fellow of the Chartered Institute of Arbitrators (FCIArb)
- Wisconsin Intellectual Property Law Association
- Wisconsin Association of Mediators
Legal Experience
- S.C. Johnson & Son, Inc., Racine, WI
- General Patent Counsel, 1984-2001
- McCracken & Frank LLC, Chicago, IL
- Partner 2002-2008
- Of Counsel 2009-date