Firm / Organisation

Marshall, Gerstein & Borun LLP

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This content is provided by Marshall, Gerstein & Borun LLP.

Managing Partner: Jeffrey S Sharp
Number of partners: 46
Number of lawyers: 78
Languages: Bosnian, Croatian, English, French, German, Gujarati, Hindi, Japanese, Mandarin, Montenegrin, Russian, Serbian and Spanish

Firm Overview:
Marshall Gerstein 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 for comprehensive intellectual property solutions tailored to their needs. With over 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.
■ Nearly 90% of the firm’s attorneys and patent agents are admitted to practice before the US 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 PhD or other advanced technical degree

Main Areas of Practice:

Intellectual Property:

Marshall Gerstein 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 & 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 IP transactional issues and deliver practical solutions. The firm crafts 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 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, with a team of 61 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 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 provides intellectual property legal services in more than 150 countries on six continents, either directly or in association with foreign intellectual property specialists with whom the firm enjoys longstanding 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., InterMune Inc., Krones AG, Ludwig Institute for Cancer Research, Merck Serono, Newell Rubbermaid Inc., Northwestern University, The Procter & Gamble Company and Shop-Vac Corporation.