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March 22, 2019
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Marshall, Gerstein & Borun
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.
- Nearly 90% 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
- Nearly 50% 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:
- Copyrights
- Design Patents
- Intellectual Property Litigation
- Intellectual Property Transactions
- Patent Prosecution
- Post-Grant Patent Proceedings
- Trade Secrets
- Trademarks
Biotechnology & Life Sciences and Pharmaceuticals Industries: "One of the best biotechnology practices in the entire country" – Chambers USA
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
- Biosimilars
- White biotech
- Agricultural biotech
- Bioinformatics
Intellectual Property Litigation: Marshall Gerstein has earned a national reputation for patent and trademark litigation. The Firm has successfully 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 post-grant 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.
2018 LMG Life Sciences Stars:
- Pamela L. Cox, Partner and Chair, Intellectual Property Transactions
- Kevin M. Flowers, Ph.D., Partner
- David A. Gass, Partner
- Julianne M. Hartzell, Partner
- John R. Labbé, Partner
- Michael Muczynski, Partner and Chair, Chemical Sciences
- Katherine L. Neville, Ph.D., Partner
- Sandip H. Patel, Partner
- Jeffrey S. Sharp, Managing Partner
Last updated September 2018
US
Patent Prosecution
Patent Strategy & Management
| Lawyer | Section | Practice Area | Location |
|---|---|---|---|
| Cox, Pamela | Intellectual Property | Patent Strategy & Management | Chicago |
| Flowers, Kevin | Intellectual Property | General Patent Litigation, Hatch-Waxman Patent Litigation | Chicago |
| Gass, David A | Intellectual Property | General Patent Litigation, Patent Prosecution, Patent Strategy & Management | Chicago |
| Hartzell, Julianne | Intellectual Property | General Patent Litigation | Chicago |
| Labbé, John | Intellectual Property | General Patent Litigation | Chicago |
| Muczynski, Michael | Intellectual Property | Patent Prosecution, Patent Strategy & Management | Chicago |
| Neville, Katherine | Intellectual Property | Patent Prosecution, Patent Strategy & Management | Chicago |
| Patel, Sandip | Intellectual Property | General Patent Litigation, Patent Prosecution, Patent Strategy & Management | Chicago |
| Sharp, Jeffrey S | Intellectual Property | Patent Prosecution, Patent Strategy & Management | Chicago |
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Intellectual Property
Marshall Gerstein & Borun
Chicago boutique Marshall Gerstein & Borun is top-tier in patent prosecution and strategy, offering expert attorneys with knowledge of all areas of life sciences. While the firm has often been lauded for its strength in the non-contentious patent arena, the firm's litigation skills were recently on display with a high-profile win in Amgen v Hospira, the first biosimilars infringement dispute to reach a jury verdict.
John Labbé was first-chair trial counsel for Amgen in the litigation, which resulted in a $70 million damages award for the client. He was recognized as the Illinois General Patent Litigator of the Year at the 2018 LMG Life Sciences Awards for his role in the case. Kevin Flowers is head of the firm's biotech and pharmaceutical litigation team, and was also a part of the trial team in the Amgen biosimilar dispute. Julianne Hartzell and Sandip Patel currently represent Dr Emmanuelle Charpentier and CRISPR Therapeutics in the headline-making interference related to the gene editing technology CRISPR-Cas9.
Pamela Cox, deemed a "licensing guru" by a competitor, is chair of the firm's IP transactions group and advisor to many sophisticated clients in relation to their portfolio management and business strategies. At the 2018 LMG Life Sciences Awards she was recognized as the Midwest Patent Strategy & Management Attorney of the Year. Managing partner Jeffrey Sharp is a "very good leader," a peer says, who applies more than 30 years of experience to his practice focused on patent prosecution and counseling for clients almost exclusively in the life sciences area. David Gass is another standout in the firm's patent group who offers IP services to a diverse life sciences client base.
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