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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
  • Managing Partner: Jeffrey S Sharp
  • Number of partners: 42
  • Number of lawyers: 79
  • Languages: Bosnian, Croatian, English, French, German, Gujarati, Hindi, Japanese, Mandarin, Montenegrin, Russian, Serbian and Spanish

Firm Overview:
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 US Patent and Trademark Office
■ More than 90% of the firm’s attorneys have science or engineering degrees
■ More than 80% of the firm’s patent agents and technical specialists have a PhD or other advanced technical degree.

Main Areas of Practice: 

Intellectual Property:
Marshall, Gerstein & Borun represents clients by providing intellectual property (IP) law services 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 IP transactional issues and deliver practical solutions. They 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 IP 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 enables 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.

IP Litigation:
Marshall, Gerstein & Borun 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 IP 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.

Patent Prosecution, Portfolio Management, & Counseling:
Marshall, Gerstein & Borun, with a team of 64 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 US 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 US interference proceedings, US 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 IP reviews in support of corporate transactions.

Trademarks & Copyrights:
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 US 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.

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.

Key Clients:
Amgen Inc., BASF Group, BioMarin Pharmaceuticals Inc., CDW Corporation, Charter Communications Inc., Eli Lilly & Co., Emerson Electric Company, Groupon Inc., 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.

Areas of Practice

  • Copyrights
  • Design Patents
  • IP Litigation
  • IP Transactions
  • Patent Interferences and Oppositions
  • Patent Prosecution
  • Post-grant Patent Office Proceedings (e.g., inter partes review proceedings)
  • Trade Secrets
  • Trademark

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