Marshall, Gerstein & Borun LLP

Marshall, Gerstein & Borun LLP is dedicated exclusively to the practice of IP law, helping clients to achieve their IP goals in more than 150 countries across six continents. The firm assists clients in all phases of the IP lifecycle, including securing rights, conducting transactions and litigating and resolving disputes. Our centralised location and singular focus enhance efficiency, responsiveness and decision making while reducing costs.

We are proud to serve as strategic advisers to leading global innovators, Fortune 500 companies, small to medium-sized companies, universities and research institutions and start-ups across a wide range of industries. The diversity of our experience provides us with a 360-degree perspective and insight that we leverage to benefit our clients and foster enduring relationships that often last for decades.

Recognition

  • Chambers USA ranks Marshall Gerstein as a dedicated IP firm, with clients saying: “We think of [Marshall Gerstein] as part of us because they know our business well and have a team approach” (2010). The firm is “highly-focused on patent matters” (2012-2013) and “first-rate for litigation and transactional work” (2009), with “one of the best biotechnology practices in the entire country” (2008).
  • Marshall Gerstein is recognised among leading law firms in the life sciences sector by LMG Life Sciences, and was named IP Boutique Firm of the Year (2016) and Patent Strategy and Management Team of the Year at the 2013 LMG Life Sciences Awards.
  • Managing Intellectual Property ranks Marshall Gerstein as one of the world’s leading patent and trademark firms, and recognised the firm as Patent Prosecution Firm of the Year – Midwest during the 2014 and 2016 Managing IP North America Awards.

Patent practice

Marshall Gerstein offers a full suite of services that address the IP needs of all our clients, beginning with the patent prosecution experience. Our attorneys manage a wide range of patent portfolios, provide patentability and other opinions, and handle licensing, due diligence and other transactional services. We also regularly handle disputes in state and federal courts and before the US PTAB and the US International Trade Commission. Our professionals work closely with clients to understand their business objectives and align our patentability assessment, preparation, prosecution, post-grant and opinions as needed. Our professionals direct foreign colleagues in prosecution, oppositions, appeals and cancellation proceedings to provide a seamless IP strategy worldwide.

IP litigation

Clients turn to Marshall Gerstein for their most visible, high-stakes IP litigation. Our size, structure and specialised practice give us flexibility to handle a comprehensive array of litigation matters while maintaining an aggressive client-centred approach. In addition to our litigation experience, clients look to us for other defensive (and offensive) IP strategies, including inter partes review, covered business method and re-examination. We consider these to be cost-effective tools that are integral to litigation strategy. We use them to stay litigation, eliminate patents and increasingly to obtain early settlements.

IP transactions

At Marshall Gerstein, we understand that there is no place for uncertainty when negotiating a deal. We develop sophisticated transaction strategies, stay abreast of rapidly changing legal issues and create enforceable agreements for each unique IP transaction. We manage the details so clients can focus on achieving their business goals. A number of our attorneys have worked as general counsel, patent counsel and technology transfer managers. This first-hand experience allows us to function more effectively as legal advisers. As a result of the roles we play, we have a comprehensive understanding of transactions and know how to secure deals efficiently while minimising risk.

Trademarks

Marshall Gerstein’s trademark attorneys offer extensive knowledge relating to trademark selection, registration, transactions and enforcement. We handle large portfolios and business-critical deals with the same skill and responsiveness that we provide when managing day-to-day client concerns. As IP-focused litigators, we have achieved major victories before the Trademark Trial and Appeal Board and in US district courts. We handle all forms of trademark advocacy, including infringement proceedings, opposition, cancellation and concurrent use proceedings, as well as Uniform Domain Name Dispute Resolution Policy proceedings against cybersquatters.

Practices

  • Copyrights
  • Design patents
  • IP litigation
  • IP transactions
  • Patent prosecution
  • Post-grant patent proceedings
  • Trade secrets
  • Trademarks

Industries

  • Aerospace
  • Biotechnology and life sciences
  • Chemical sciences
  • Cleantech and renewables
  • Consumer products
  • Electrical and computer technologies
  • Industrial and mechanical technologies
  • Internet and cyberlaw
  • Materials science
  • Medical devices
  • Nanotechnology
  • Non-profit technology transfer
  • Pharmaceuticals

Contact details

Marshall, Gerstein & Borun LLP
233 South Wacker Drive
6300 Willis Tower
Chicago IL 60606
United States

Professional contacts

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