Marshall, Gerstein & Borun LLP is at the forefront of intellectual property law. The Firm’s professionals understand the hard science behind clients’ innovations and how to devise, evaluate, and execute intellectual property strategies. Fortune 500 corporations, small to midsize companies, non-profits and start-ups turn to Marshall Gerstein for comprehensive intellectual property solutions tailored to their needs. With over 90 attorneys supported by a full team of patent agents, technical specialists and paralegals, the Firm assists clients with protection, enforcement, and transfer of intellectual property rights throughout the world.
Over 80% of the Firm’s attorneys and patent agents are admitted to practice before the United States Patent and Trademark Office
Nearly 90% of the Firm’s attorneys have science or engineering degrees
Over70% of the Firm’s patent agents and technical specialists have a Ph.D. or other advanced technical degrees
Marshall Gerstein represents clients by providing intellectual property law services across a full range of industries, including aerospace, agriculture, automotive, biotechnology, chemical, cleantech and renewables, consumer goods, e-commerce, electrical and software engineering, electronics, energy, engineering, entertainment, fashion and apparel, finance, food and beverage, furniture and home furnishings, government, health care, industrial operations, insurance, Internet and cyberlaw, life sciences, manufacturing, materials science, mechanical, media, medical devices, nanotechnology, non-profit technology transfer, pharmaceutical, retail, and software technology.
Main Areas of Practice: The breadth of the technical and legal training of the Firm’s professionals allows them to effectively serve clients’ intellectual property needs in virtually all intellectual property services and business sectors. The Firm’s practice areas include:
• Design Patents
• Intellectual Property Litigation
• Intellectual Property Transactions
• Patent Prosecution
• Post-Grant Patent Proceedings
• Trade Secrets
Biotechnology & Life Sciences and Pharmaceuticals Industries: Marshall Gerstein offers continuity and predictability along the challenging path to biotech success. The Firm’s professionals have advised start-ups on the road to initial public offerings and acquisitions, helped middle-market businesses crack the Fortune 500, and counseled multinational companies on how to protect key assets around the world. The Firm has vast experience helping biotech clients devise successful intellectual property strategies that build U.S. and foreign patent portfolios, protect commercial products and processes, maximize returns, and extend patent life cycles. Marshall Gerstein focuses on client goals first and foremost, while maintaining a laser focus on legal, scientific, and industry developments that could require strategic adjustments. Marshall Gerstein develops and deploys creative, forward-looking intellectual property strategies that align with rapidly changing technology in a variety of biotechnology industries:
• Biopharmaceuticals and immunotherapy
• Diagnostics and personalized medicine
• White biotech
• Agricultural biotech
Intellectual Property Litigation: Marshall Gerstein has earned a national reputation for patent and trademark litigation. The Firm has success fully represented clients in cases involving some of the most significant issues in intellectual property law during the last 60 years, many resulting in major victories and landmark decisions. Almost all of the Firm’s attorneys have technical degrees, with one-third holding advanced degrees in science or engineering. Because the Firm’s trial attorneys have deep technical knowledge, they are able to convey the substance and significance of technological innovations to judges and juries in a clear, persuasive manner.
Intellectual Property Transactions, Licensing, and Technology Transfer: With seasoned licensing attorneys having experience as in-house general counsel, patent counsel, and technology transfer managers, the professionals at Marshall Gerstein understand intellectual property transactional issues and deliver practical solutions. The professionals craft comprehensive agreement structures that implement clients’ priorities, minimize unallocated risks, and allow for changing circumstances. The Firm’s transactions practice includes the full range of agreements relating to intellectual property assets, such as alliance and collaborations, in and out licenses, confidentiality, joint venture, material and technology transfer, research, clinical trial and testing, manufacturing, distribution and supply, consulting, trademark, trade secret, open-source, and other agreements. The Firm has significant experience with universities and other not-for-profit research institutions that enable the Firm to deal effectively with many of the issues these institutions commonly face, including invention evaluation, inventorship disputes, research collaboration and license agreements, deal maximization, and negotiating with inventors who have external priorities.
Patent Prosecution, Portfolio Management, and Counseling: Marshall Gerstein, with a team of over 60 patent prosecution attorneys and patent agents, has one of the largest patent prosecution practices in Chicago and has the advantage of broad and deep experience across every major technical field and industry in managing large and interrelated U.S. and foreign patent portfolios. The Firm helps clients evaluate inventions, perform patentability assessments, draft and prosecute patent applications, obtain and license patents throughout the world, and assist with inventorship disputes. The Firm’s prosecution professionals are experienced with inter partes and postgrant patent prosecution matters, including U.S. interference proceedings, U.S. reexamination and reissue proceedings, and assisting foreign counsel with opposition proceedings. The Firm also has substantial experience in preparing freedom-to-operate opinions that evaluate issues of validity, enforceability, and/or infringement. The Firm also performs due diligence intellectual property reviews in support of corporate transactions.
Trademarks & Copyrights: Marshall Gerstein provides seasoned advice on the risks and advantages of branding objectives and assists in clearing, registering and protecting clients’ trademarks. The Firm provides the full range of trademark-related services in the U.S. and abroad, including registering, enforcing, opposing and defending trademark rights. The Firm represents aggrieved brand owners and alleged infringers in the resolution of disputes involving trademark, design and trade dress infringement.
2019 LMG Life Sciences Stars:
Pamela L. Cox, Partner and Chair, Intellectual Property Transactions
RMMS consists of over 30 attorneys focused exclusively in the field of pharmaceutical and biopharmaceutical patent and regulatory counseling, and litigation under Hatch-Waxman, the Medicare Modernization Act (MMA), the Biologics Price Competition and Innovation Act (BPCIA), as well as post-grant review before the Patent Trial and Appeal Board.
RMMS attorneys embrace the science of a case, and make it an integral part of our winning strategy. Indeed, a majority of our attorneys have technical degrees or backgrounds in a variety of areas and disciplines, including chemistry, biochemistry, biology, molecular biology, microbiology, genetics, bacteriology, bioengineering, biomedical engineering, chemical engineering and pharmacy, and many of our attorneys are registered with the USPTO. RMMS also employs full-time Ph.D. technical advisors specializing in chemistry, biological sciences, and pharmaceutics/pharmacy.
Our experience is unparalleled in the industry. Since the firm’s inception over 15 years ago, RMMS has handled over 300 Hatch-Waxman/BPCIA and related pharmaceutical litigation matters (including declaratory judgment, patent infringement, Administrative Procedure Act (APA), and commercial dispute matters) involving at least 160 different drug products for over 25 pharmaceutical clients. In addition to our substantial litigation experience, our attorneys also have extensive regulatory and legislative experience.
We understand that patent litigation is not an end-game, and that the business decisions made throughout the entire product and patent evaluation, regulatory review, litigation, and commercialization process are equally critical to the company’s strategic plans involving any one product or group of products. Our goals are aligned with those of our clients: to ensure that each client obtains value from its applications, whether through the eventual commercial marketing of the product, the sale or assignment of the asset, or relationship-building with other companies through joint development agreements, active pharmaceutical ingredient (API) and finished dosage form supply agreements, licensing agreements, and co-promotion and marketing agreements.
As a preeminent boutique IP law firm, Green Griffith focuses on pharmaceuticals, chemistry and biotechnology — and specializes in litigation. Their attorneys share decades of experience partnering with both brand and generic companies to navigate the most complex IP and related FDA issues, including the Hatch-Waxman Act.
IP Litigation Specialists Acknowledged leaders in the field, Green Griffith helps clients build and execute targeted, timely and cost-effective IP strategies from project initiation through litigation, with an eye toward securing market position and overcoming obstacles to new product entry. Their range of services includes counseling regarding strategic formulation, portfolio and due diligence, as well as handling all stages of trial and appeals concerning IP and related FDA issues affecting 505(b)(1), 505(b)(2) and ANDA applications, as well as the BPCIA and biologics, and their related drug products and therapies.
Each of their attorneys have extensive scientific backgrounds — many with Ph.D.s — that permit exploration of technical solutions at a deep level. This expertise, coupled with their unparalleled experience litigating at the PTO and in the federal courts, positions them to craft and execute the best strategy to attain clients’ goals.
Their extensive experience, technical expertise, big picture vision and integrated strategy consistently produce favorable outcomes for companies developing, protecting and commercializing their products, processes and therapies.
Cravath, Swaine & Moore LLP has been known as one of the world’s preeminent law firms for over two centuries. Each of its practices is highly regarded and its lawyers are recognized for their commitment to the representation of their clients’ interests in the United States and internationally. Cravath represents a full spectrum of companies, from biotechnology startups to established healthcare and life sciences companies, on a variety of corporate and litigation matters. We have played a leading role in critical and complex transactions and cases that have defined the life sciences industry, including handling one of the first suits to proceed under the Biologics Price Competition and Innovation Act, in which we represented Amgen in a lawsuit arising from its anticipated introduction of the first biosimilar to AbbVie’s biologic drug, Humira®.
The Firm represents pharmaceutical, biotechnology, healthcare services and medical device companies in significant intellectual property and antitrust litigation; complex shareholder derivative and securities suits; breach of contract and licensing disputes; and arbitrations. We also handle government and internal investigations; regulatory enforcement; and compliance matters for life sciences clients, as well as regulatory clearance and antitrust advice relating to mergers and acquisitions.
On the corporate side, we advise life sciences companies and their boards of directors in connection with transactions ranging from complex collaboration agreements to a wide variety of acquisitions and divestitures of companies and businesses. Clients also rely on our financing expertise as well as our experience in navigating risks and strategies related to environmental, social and governance (“ESG”) issues.
Intellectual property issues are critical for many of our clients in the life sciences sector. We have significant expertise across a broad range of intellectual property issues including strategic counseling, review and analysis in developing and optimizing intellectual property rights, patents, licensing and portfolio development and exploitation.
Cravath’s clients in this area have included: Abiomed, Actelion, Akorn, Alcon, Amgen, Chemed, CRISPR Therapeutics, Illumina, Insys Therapeutics, IsoPlexis, Medinol, Merck & Co., Novartis, OrbusNeich, RedHill Biopharma, Roivant Sciences, Thermo Fisher Scientific, Vaxxinity, Viatris and Vitaworks.
2021 LMG Life Sciences Stars: • Evan R. Chesler • Keith R. Hummel • David J. Kappos