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Marshall, Gerstein & Borun LLP

Chicago

Marshall, Gerstein & Borun LLP - Chicago
  • 233 South Wacker Drive
  • 6300 Willis Tower
  • Chicago
  • Illinois
  • USA
  • IL 60606-6357
  • Managing Partner: Jeffrey S. Sharp
  • Number of Partners: 42
  • Associates and Counsel: 36
  • Patent Agents: 9
  • Technical Specialists: 4

THE FIRM:
Marshall, Gerstein & Borun 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 mid-sized companies, non-profits and start-ups turn to Marshall, Gerstein & Borun for comprehensive intellectual property solutions tailored to their needs. With almost 80 attorneys supported by a full team of patent agents, technical specialists and paralegals, the Firm assists clients with protection, enforcement and transfer of IP rights throughout the world. 

 - More than 90% of the Firm’s attorneys and patent agents are admitted to practice before the U.S. Patent and Trademark Office.

 - More than 90% of the Firm’s attorneys have science or engineering degrees.

 - More than 80% of the Firm’s agents and technical specialists have a Ph.D. or other advanced technical degree.

MAIN AREAS OF PRACTICE: 

Intellectual Property
Marshall, Gerstein & Borun represents clients across a full range of industries including aerospace, agriculture, automotive, biotechnology, chemical, cleantech and renewable, consumer goods, e-commerce, electrical and software engineering, electronics, energy, engineering, entertainment, financial and insurance, Internet and cyberlaw, food and beverage, furniture and home furnishings, government, health care, industrial operations, insurance, life sciences, manufacturing, materials science, mechanical, media, medical devices, nanotechnology, non-profit technology transfer, pharmaceutical retail and software technology.

IP 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 & Borun understand intellectual property transactional issues and deliver practical solutions. They craft comprehensive agreement structures that implement the 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. Marshall, Gerstein & Borun also has significant experience with universities and other not-for-profit research institutions which 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.

Litigation
Marshall, Gerstein & Borun has earned a national reputation for patent and trademark litigation. The Firm has successfully represented clients involving some of the most significant issues in intellectual property law during the last 50 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.

Patent Prosecution
Marshall, Gerstein & Borun, with a team of 65 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 also are experienced with inter partes and post-grant prosecution matters, including US interference proceedings, US reexamination and reissue proceedings, and assisting foreign counsel with opposition proceedings. The Firm also has substantial experience in preparing validity and infringement opinions.

Portfolio Management
Marshall, Gerstein & Borun works closely with clients to manage their intellectual property assets and recommend where, how and when to protect the assets. The Firm also prepares opinions on patents and other intellectual property assets owned by clients or asserted by third parties against the clients and performs due diligence reviews in support of corporate transactions.

Trademarks & Copyrights
Whether clients’ business interests are focused on the domestic U.S. market or extend across the globe, Marshall, Gerstein & Borun 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, counterfeit products, dilution, unfair competition and trade practices, trade secret misappropriate and rights of publicity. The Firm also protects copyrights of clients to secure rights and clear the use of copyrighted works, including acquisition, registration and licensing.

INTERNATIONAL WORK:
Marshall, Gerstein & Borun provides intellectual property legal services in more than 100 countries on six continents, either directly or in association with foreign intellectual property specialists with whom the Firm enjoys long-standing relationships. The Firm includes professionals who are fluent in Bosnian, Croatian, French, German, Gujarati, Hindi, Japanese, Mandarin, Montenegrin, Russian, Serbian and Spanish.

CLIENTS:
Representative current clients include: Amgen Inc., BASF Group, BioMarin Pharmaceuticals Inc., CDW Corporation, Charter Communications Inc., Eli Lilly & Co., Emerson Electric Company, Groupon Inc., Hollister Incorporated, Hynix Semiconductor Inc., Illumina Inc., InterMune Inc., Krones AG, Ludwig Institute for Cancer Research, Merck Serono, Newell Rubbermaid Inc., The Nielsen Company, Northwestern University, The Procter & Gamble Company and Shop-Vac Corporation.

RECRUITMENT:
Marshall, Gerstein & Borun recruits at a variety of U.S. law schools and also employs lateral hire attorneys. Many of its attorneys are adjunct professors, and others are frequent speakers at intellectual property symposia hosted by various law schools, legal societies and trade associations. The Firm is committed to the recruitment and advancement of the most talented and qualified people from all backgrounds. The Firm devotes time and resources to such organizations as the Chicago Committee on Minorities in Large Law Firms, the Coalition of Women’s Initiatives in Law Firms and the National LGBT Bar Association. The Firm also annually sponsors and participates in career fairs organized by minority and LGBT legal associations.

Branches

  • 233 South Wacker Drive,
  • 6300 Willis Tower,
  • Chicago,
  • Illinois
  • USA
  • IL 60606-6357
  • Tel +1 312 474 6300
  • Fax +1 312 474 0448
  • Website : www.marshallip.com

Intellectual Property - Illinois

THE FIRM This dedicated IP firm offers both prosecution and litigation capabilities, with particular strength in patent prosecution. Computer and electronic technologies are an active area of the practice, although the team works across a range of sectors including mechanical, chemical and biotech. Clients include Amgen, InterMune and Merck Serono.

Sources say: "In many ways we think of them as part of us because they know our business well and have a team approach. Their tremendous amount of contacts and history allows them to provide services and opinions that are well-rounded."

KEY INDIVIDUALS Jeremy Kriegel is well regarded in patent prosecution, with particular experience in mechanical and electronic technologies. Clients say: "He is very thorough in his consideration of the issues and their potential impact on his client's business." He is also praised for his "innovative insight and creative solutions."