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
Paul Hastings is an IP litigation powerhouse, protecting the interests of life sciences, healthcare, and technology clients in patents and trade secrets litigation with litigation and trial success at all levels in key forums and venues.
We are strategic, nimble, efficient, and dedicated to our clients, with a deep bench of diverse, award-winning attorneys who excel in high-stakes life sciences IP enforcement and defense. Our approaches to cases and seamless integration of strategy for Patent Trial and Appeal Board (PTAB) proceedings, as well as district and appellate court proceedings, has propelled us to represent innovator life sciences companies including in bet-the-company cases.
Chambers and Partners has individually ranked six of our IP Partners, and our New York life sciences team is ranked for "Intellectual Property: Patent." Chambers also reports that we are known for "renowned counseling and representation of innovator pharmaceuticals and biotechnology companies." The Legal 500, U.S. News & World Report & Best Lawyers, Benchmark Litigation, and Managing IP all rank our practice as Tier 1 Nationally for IP and Patent Litigation. BTI Consulting lists us each year as a "Go-To Litigation Firm" and "Best for Complex IP Litigation" in its annual Intellectual Property Outlook report.
In addition to the rankings mentioned above, our IP practice as a whole has been recognized by third-parties and rankings organizations including:
Intellectual Asset Management recognizes us as among "The World's Leading Patent Professionals" each year for patent litigation, Federal Circuit appeals, ITC 337 Investigations;
Law360 recognized us as "Most Valuable Players" for Life Sciences, Technology, and IP as well as "Practice Group of the Year" for Life Sciences;
The American Lawyer recognized us as 2018 "IP Transatlantic Team of the Year" for work we performed for a branded pharmaceutical company; and
National Law Journal named several IP partners "Intellectual Property and Litigation Trailblazers."
We offer clients the following four key benefits–present in combination–which we believe differentiate us from the relatively small group of other life sciences IP practices with whom we compete:
Substantial experience handling parallel proceedings before the PTAB:
Our Patent Office practice has extensive experience with post-grant challenges, including post-grant review (PGR) and inter partes review (IPR) proceedings, resulting in a strategic and cost-efficient defense to litigation. Our attorneys have been involved in over 500 post-grant proceedings, and are undefeated at the PTAB in life sciences matters. Managing both district court and Patent Office proceedings, we are able develop efficient, coordinated strategies that take account of the differences between the two venues, while maintaining consistency in positions and taking the approach most likely to protect key patents through all proceedings.
Third parties have recognized us as a go-to-firm for post-grant proceedings. Chambers and Intellectual Asset Management recognizes us as experts in PTAB practice. In fact, we helped form the PTAB Bar Association and maintain professional relationships with other members of the Bar and Judges.
Diverse bench of nearly 40 legal professionals and PH.D.-trained scientific advisors: Besides being skilled trial lawyers, nearly all of our life sciences IP attorneys hold technical degrees, including advanced degrees in the life sciences, chemistry, materials science, or engineering, and many have hands-on experience from work at leading research institutions and large life sciences companies. Our technical acumen allows us to field efficient litigation teams that possess deep insight into the technology and understand how to present technical issues in the most persuasive way. We work efficiently and closely with inventors and experts to develop the strongest legal positions backed up by solid scientific positions. We are deeply committed to diversity, equity, and inclusion, and nearly half of the attorneys in our life sciences intellectual property practice are diverse, beginning with our award winning partner and of-counsel ranks. We recruit the best and brightest from leading law schools and work with a range of organizations to build our diverse and inclusive talent base, which has resulted in our being consistently recognized for our commitment to advancing diverse leaders.
Unwavering commitment to innovator clients: We are dedicated to seamless client communication, and we promise that our lead counsels give focused attention to matters throughout the course of the case. We do not have conflicts being adverse to generics. We are experts in the nuances of Hatch-Waxman and biotech patent litigation, including strategies to win cases in federal district court while navigating intersecting regulatory issues involving the FDA. We have litigated against virtually every generic drug company and generic law firm. We look to outmaneuver the generics' firms, including by staying attuned to the trends and tactics evolving in the generic corps. We also have substantial experience in biosimilars patent litigation practice under the BPCIA, providing key strategic advice and representing both reference product sponsors and biosimilar applicants companies in litigation and related PTAB proceedings involving multi-billion dollar biologics products.
Proven track record of success: Whether judge or jury–we know how to try case–and we win. And because our opposition knows we are not afraid to go to trial we are able to leverage our skill and reputation to deliver successful results through settlements where beneficial for our clients. Our success does not end at trial. Leveraging Federal Circuit clerkships and deep appellate experience, we partner with our clients through appeal.
Our clients trust Paul Hastings to protect their most important products and processes. Together, our nationally ranked IP litigation and appellate practices shape a formidable team that serves our clients well.
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.
Founded in 1819, Cravath, Swaine & Moore LLP is widely recognized as one of the preeminent law firms in the world. 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 some of the largest and most highly regarded companies in the life sciences industry 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®.
Our attorneys bring to the table an understanding of the life sciences industry coupled with extensive corporate and litigation experience handling high-level matters in other areas, giving us both the depth and breadth of expertise to creatively and effectively solve problems affecting all aspects of our clients' businesses.
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 mergers and acquisitions; corporate governance matters, including defense against activist hedge funds; capital markets offerings and banking and credit transactions; financial restructuring and reorganization; tax; and executive compensation and benefits matters. Cravath's environmental lawyers work with its life sciences clients on acquisition and disposition strategies as well as financings and advise on the challenges and opportunities associated with environmental, social and governance ("ESG") issues, sustainability concerns and climate change. Our corporate IP lawyers advise on acquisitions and divestitures; multiparty joint ventures and strategic investments; licensing agreements; and portfolio development and exploitation.
Cravath's clients in this area have included: Abiomed, Actelion, Akorn, Amgen, Chemed, Insys Therapeutics, Johnson & Johnson, Medinol, Merck & Co., Mylan Laboratories, Novartis Pharmaceuticals, OrbusNeich, RedHill Biopharma, Roivant Sciences and Vitaworks.