Marshall Gerstein & Borun

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Rankings

Illinois

Intellectual Property - highly recommended

Editorial coverage

Marshall Gerstein & Borun is a single-office, Chicago-based IP firm with more than 100 attorneys. The firm is primarily recognised for its high quality patent and trade mark prosecution practices. Says one client: "They are very strategic, and proactive in making recommendations about how to advance, expand and defend our IP portfolio. So far their track record has been impressive, in terms of the patents issued and breadth of claims covered in those issued patents. Bottom line, I trust that our patent portfolio is in good hands, and I don't need to push or remind them about things, second guess them, or look over their shoulders." Another client says: "Patent prosecution tends to include many items pending at the same time so you have to be on top of your docket in order to avoid last minute rushes and fire drills, or worse, a missed filing deadline. MG&B attorneys are better than anyone else I've worked with in tracking due dates and staying on top of deadlines." In litigation, the firm serves as lead counsel for CDW in a number of patent infringement suits in various jurisdictions around the country, one of which recently proceeded to trial in the Eastern District of Texas. The firm successfully defended Charter Communications in eight separate patent suits brought by non-practising entities and alleging infringement by Charter's cable television, high-speed internet or digital telephone services. In trade mark work, the firm handles the international portfolio for Guinness World Records Limited. Other notable clients include InterMune, Immune Design Corporation and Northwestern University.

Illinois

Marshall Gerstein & Borun is a single-office, Chicago-based IP firm with more than 100 attorneys. The firm is primarily recognized for its high-quality patent and trademark prosecution practices. Says one client, "They are very strategic, and proactive in making recommendations about how to advance, expand and defend our IP portfolio. So far their track record has been impressive, in terms of the patents issued and breadth of claims covered in those issued patents. Bottom line, I trust that our patent portfolio is in good hands, and I don't need to push or remind them about things, second guess them, or look over their shoulders." Another client says "patent prosecution tends to include many items pending at the same time so you have to be on top of your docket in order to avoid last minute rushes and fire drills, or worse, a missed filing deadline. MG&B attorneys are better than anyone else I've worked with in tracking due dates and staying on top of deadlines." In the litigation realm, the firm serves as lead counsel for CDW in a number of patent infringement suits in various jurisdictions around the country, one of which recently proceeded to trial in the Eastern District of Texas. The firm successfully defended Charter Communications in eight separate patent suits brought by non-practicing entities and alleging infringement by Charter's cable television, high-speed internet or digital telephone services. In the trademark realm, the firm handles the international portfolio for Guinness World Records. Other notable clients include InterMune, Immune Design and Northwestern University.

Firm contact

Illinois

Firm Overview

Marshall Gerstein & Borun is dedicated to intellectual property law and has had this exclusive focus since it was founded in 1955. The firm protects, enforces and transfers the intellectual property of its clients in more than 100 countries on six continents. The firm understands the hard science behind clients' innovations and has the technical skills and business acumen to work with them hand-in-hand.

Commitment – We are committed to providing the best intellectual property services possible to our clients. Our team successfully manages and completes all of the intellectual property matters entrusted to us, on time and within budget.
Capability and Capacity – We have over 80 attorneys, patent agents and technical specialists with training in many scientific, technical and legal disciplines. We also have an experienced support staff that includes a dedicated docketing department, prosecution and litigation paralegals and client-focused accounting and administrative staff. More than 90% of the firm's attorneys have science and engineering degrees, and many professionals have a Ph.D. or other advanced technical degree.
Collaboration – Our professionals collaborate with each other and with our clients to provide reliable, practical advice and sophisticated work product.

Full-Service IP Firm

Our professionals' breadth of technical and legal training allows us to serve effectively the intellectual property needs of Fortune 500 companies, mid-sized companies, universities, non-profit organizations and start-ups in virtually all IP services and business sectors. The firm's practice areas include:

Copyrights
Design Patents
IP Litigation
IP Transactions
Patent Prosecution, Interferences and Oppositions
Trade Secrets
Trademark Prosecution and Enforcement

Marshall Gerstein & Borun's 2013 IP Stars

Biotechnology
Li-Hsien (Lily) Rin-Laures, M.D., Partner

Dr. Rin-Laures is her clients' strategic partner in using intellectual property to achieve their business goals. With two decades of experience in building and assessing patent portfolios in the biopharma industry as well as in negotiating licenses and strategic alliances, she anticipates issues and opportunities. She brings to her practice a unique insider's perspective gained as former General Counsel of a publicly held biotechnology company. She has invaluable insight acquired from managing patent portfolios for a number of FDA-approved drugs. A substantial part of her work involves the interface of patents with clinical product development, FDA regulations and regulatory exclusivity.

Jeffrey S. Sharp, Managing Partner

Mr. Sharp advances and protects clients' complex products and methods innovations developed in the areas of biotech, chemistry and chemical engineering. He counsels clients in their intellectual property matters and prosecutes patent portfolios on their behalf. Businesses profit from his thoroughness and in-depth knowledge derived from his educational training and more than 25 years of experience in the fields of chemistry and biotechnology. Mr. Sharp has handled matters in a wide variety of biotechnology disciplines, such as pharmaceuticals, nutraceuticals and gene therapy, recombinant nucleic acid technologies, including plant biotechnology, and in-vivo and in-vitro diagnostic and gene-sequencing methods.

Joseph A. Williams, Jr., Ph.D., Partner and Chair of Biotechnology

Dr. Williams has more than 20 years of experience working in a wide variety of biotechnology matters for clients, including global biopharmaceutical companies, involving domestic and foreign patent prosecution, U.S. interference and foreign opposition proceedings, non-infringement/validity opinions and portfolio management. He brings significant experience in the field of biotechnology, combining his legal knowledge with extensive experience gained from doctoral training in biochemistry and post-doctoral research in molecular biology and microbiology.

IP Litigation
Kevin D. Hogg, Partner and Chair of IP Litigation

Mr. Hogg focuses his practice on litigation and counseling concerning patents, trademarks, unfair competition and trade secrets, and works with a wide variety of products and technologies. During his 25-year career, he has appeared in federal courts across the United States in cases ranging from relatively modest to complex multidistrict actions with claimed damages in excess of $100 million. He regularly advises highly respected innovators, such as The Procter & Gamble Company, on intellectual property matters. Both clients and peers recognize Mr. Hogg for his exceptional legal skills.

Patent Prosecution
James J. Napoli, Ph.D., Partner and Chair of Patent Prosecution

For clients developing chemical arts in a wide range of applications, including polymers, personal care, medical and pharmaceutical products, Dr. Napoli builds the value of their patents and secures their rights. Clients gain from his keen analytic ability and deep understanding of their technologies, founded on his graduate work in organic chemistry and extensive industry experience in advanced research, chemical industry regulation and commercial applications. His broad and diverse background adds pragmatic insight from more than two decades of legal work.

Trademark & Copyright
Gregory J. Chinlund, Partner and Chair of Trademark & Copyright

Mr. Chinlund counsels businesses with respect to protecting valuable intangible assets – including trademarks, industrial designs and copyrights – on a global scale. With a firm grasp on the importance and interplay of various forms of intellectual property, he offers clients comprehensive strategic advice for brand protection. He understands the business mindset and, thus, the value of avoiding unnecessary legal posturing so that clients can return to business as usual as quickly as possible.

Michael R. Graham, Partner

Mr. Graham has assisted clients in developing and protecting their trademark, copyright and other IP rights, most recently domain names, for more than 25 years. He works closely with clients to maximize the value of their IP assets and provides cutting edge advice, as reflected by his early recognition and continuing work with clients to commercialize and protect trademarks and copyrighted materials on the Internet. Mr. Graham has guided clients through domain name acquisitions and disputes under ICANN's UDRP procedures. He is among the leading innovators in this area and remains so through his involvement in the International Trademark Association's Internet Committee and ICANN's new gTLD program.