Jonathan Hughley focuses his practice on the preparation and prosecution of patent applications involving mechanical, electro-mechanical, and software technologies. His former experience and technical background provides substantive knowledge in numerous technological areas. He prepares and prosecutes domestic and foreign utility and design applications and prepares patentability and infringement opinions for global companies. At Marshall Gerstein, Jonathan leads the firm’s Industrial & Mechanical Technologies practice – managing an interdisciplinary team of attorneys and professionals to advise clients from varying technological sectors on how to best protect their intellectual property.
In 2022, Jonathan was selected to participate in the Leadership Council on Legal Diversity (LCLD) Fellowship Program. The LCLD Fellowship Program provides diverse, high-potential, mid-career attorneys with professional development opportunities, leadership training, relationship-building opportunities, and networking access. To be selected, attorneys must demonstrate exceptional leadership skills, significant impact within their organization and community, and a steadfast commitment to diversity, equity, and inclusion. Since 2017, he holds the designation of an “Emerging Lawyer” by his peers – a distinction that fewer than 2% of all lawyers licensed in each state have received. Additionally, since 2020, Super Lawyers selected Jonathan for the Illinois Rising Stars® list, featuring top attorneys in the practice of intellectual property law. The Chicago Committee for Advancing Minorities in Large Law Firms selected Jonathan to the Committee’s inaugural Pathway to Partnership Fellowship program which aims to develop client relationships for diverse attorneys. Profiles in Diversity Journal recognized Jonathan on the inaugural Black Leaders Worth Watching list and most recently Crain's Chicago Business recognized him on the 2021 Notable Rising Stars in Law list.
Jonathan strives to extend his practice beyond intellectual property law by representing clients on a pro bono basis in conjunction with local legal service providers. Recently his pro bono client was granted clemency—his client was one of just 30 petitioners whose petitions were granted on the last day of Former Governor Rauner’s term.
In addition to his client-focused work, he serves on the firm’s Diversity & Inclusion Committee, Finance Committee, and Recruiting Committee, and is a former member of the firm’s peer-elected Associates Committee. When he’s not working, Jonathan enjoys serving at his church, cooking for his family, building toys and gadgets with his sons, and fishing.
Inventors and in-house counsel rely on Jonathan’s experience to assist them in developing appropriate patent protection strategies. Jonathan takes the same approach when managing the intellectual property of all his clients: to first identify the clients’ needs, and later develop an effective protection strategy that will help the client meet those needs.
- Prepared and prosecuted domestic and foreign utility and design applications for global companies.
- Conducted wide-ranging search and opinion work for global leaders in respective industries.
- Completed M&A IP portfolio review, analysis, and due diligence to assist with successful acquisitions and mergers.
- Assisted startup company in obtaining patent protection, resulting in a successful appearance on entrepreneurial investment show Shark Tank.
Jonathan’s work spans a variety of industries, including:
- Agricultural equipment
- Aircraft components and equipment
- Automotive components and drive systems
- Autonomous driving systems
- Building construction materials and tools
- Consumer products and goods
- Fitness and sporting goods equipment
- Food processing and packaging
- Heavy-duty machinery
- Household appliances
- Illumination technologies
- Imaging systems
- Industrial control systems
- Manufacturing systems and machinery
- Medical devices
- Oil and gas systems
- Portable electronic devices and accessories
- Sound attenuation technologies
Background and Credentials
Jonathan understands clients. Prior to joining Marshall, Gerstein & Borun LLP, he worked in numerous engineering and legal capacities at International Truck & Engine Corporation and Caterpillar, Inc. In law school, he worked as a Commercialization Analyst for the University of Illinois’ Office of Technology Management, where he identified, marketed, and licensed intellectual property developed by on-campus research. Jonathan also worked at the University of Illinois College of Law Patent Clinic, conducting prior art research and assisting IP clients with patent applications and other matters.
Jonathan’s leadership roles include serving as an Associate Board member of The Chicago Committee for Advancing Minorities in Large Law Firms, an organization that seeks racial and ethnic diversity in the legal profession. He currently serves as the Chair of the Nominations Committee, and is a member of the Partner Roundtable Committee.
Jonathan received his J.D., cum laude, from the University of Illinois College of Law. Additionally, he holds a B.S. degree in Mechanical Engineering from the University of Illinois at Urbana-Champaign.
- University of Illinois College of Law, Urbana-Champaign (J.D., cum laude)
- University of Illinois, Urbana-Champaign (B.S.)
- Mechanical Engineering
- U.S. Patent and Trademark Office
Publications and Presentations
"Careers in Intellectual Property and Patent Law," Panelist, Illinois Intellectual Property Alliance (ILIPA) Panel Discussion, April 7, 2022.
- "Managing Today's Fast-Paced IP Department," Co-author, ACC Docket, September 16, 2021.
- "How I Made Partner: Show Your Commitment, Advises Marshall Gerstein’s Jonathan Hughley,” Law.com, October 16, 2020. (featured quotes)
- "Overcoming Bias in the Legal Industry and Paving a More Inclusive Path Forward," July 30, 2020, Lawyer Monthly.
- Presenter, “Utility Model Patents: Use and Enforcement in Global Patent Practice,” CLE Presentation, January 29, 2015.
Community and Professional Involvement
- Leadership Council on Legal Diversity
- The Chicago Committee for Advancing Minorities in Large Law Firms – Associate Board
- American Bar Association
- Institute for Inclusion in the Legal Profession
- American Intellectual Property Law Association (AIPLA)
- Wills for Heroes Foundation
- Cabrini Green Legal Aid
- Lupus Foundation of America