Mark James FitzGerald

Partner at Nixon Peabody LLP
Ranked in United States: Massachusetts
IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Recommended - Individuals: prosecution

Nixon Peabody’s patent practice is certainly well specced: in total, the firm has 64 patent professionals (52 of them lawyers and 15 of them PhDs) and inspiring leaders stationed in multiple major markets – including DC, Boston, Chicago and Los Angeles – who power through 1,000-plus US patent filings a year and myriad litigations in hotspots such as Delaware, the Eastern District of Texas and Northern California. It enjoys a sterling reputation among corporates as well academic and research institutions, with representation of the latter a significant area of specialisation for many years. Boston-based David Resnick and Ronald Eisenstein, for example, are long-term collaborators with Harvard University, which they have recently been assisting with prosecution matters relating to covid-19. The distinguished Resnick sets the quality benchmark high as a portfolio manager and prosecution attorney. “Strategic and innovative”, Eisenstein “combines excellent analytical skills with a pragmatic mindset” and “goes above and beyond to serve the best business interests of his clients”. Another linchpin of the life sciences practice, Mark James FitzGerald, also garners vocal praise: “He is an exceptional attorney and has become one of the faces of microbiome intellectual property; he knows the IP package of all the leading companies in the space and has his finger on the pulse of the patent challenges they face. Mark is refreshing because he isn’t someone you need to teach or train – he is unique in the breadth of his knowledge, is great to brainstorm with and is someone you can trust to manage your portfolio and define your IP strategy. He’s nothing short of incredible to work with.” Outside of his microbiomes niche, he fields diverse life sciences mandates and manages an extensive portfolio of patents for Boston University alongside Eisenstein.

Mark James FitzGerald's Profile

Mark James FitzGerald concentrates his practice on IP and patent law, representing industry and academic/non-profit institution clients from the United States and abroad for the strategic development of patent portfolios, analyses of freedom to operate, patent validity and infringement and associated opinion preparation, transactional due diligence, and associated client counselling. Leveraging his molecular biology background and experience, his work relates to the biotechnology patent arena, working with clients to secure meaningful patent protection for their own technology, as well as assisting them in charting a course through the patent protection shoals of their competitors.

Mr FitzGerald has prosecuted patents and counselled clients in microbiome-related technology involving IBD, Crohn’s, C diff and other gut dysbioses; CNS disorders, eating disorders and vaginal dysbioses; recovery from post-antibiotic dysbioses; skin dysbioses; and cosmetics. Mr FitzGerald has obtained issuance of US patents covering microbiome technology, including therapeutics for food allergy, eating disorders and asthma for numerous clients.

In addition to strategic patent portfolio development, Mr FitzGerald also works with clients to evaluate the patent landscape regarding their technology, and the strengths and weaknesses of their competitors’ patent positions, consulting on design-around options, as well as providing reasoned opinions regarding patent invalidity and non-infringement where necessary. Additionally, he has spoken at a number of conferences and summits and is the editor of Nixon Peabody’s Gut Check microbiome patents newsletter.

Firm Profile

At Nixon Peabody, we see 21st century law as a tool to help shape our clients’ futures.

Our focus is on knowing what is important to our clients now and next, so we can foresee obstacles and opportunities in their space and smooth the way. We ensure they are equipped with winning legal strategies as they navigate the exciting and challenging times we live in.

Our ability to do this comes from these working principles:

  • We’re curious and extremely focused on understanding our clients’ businesses and industries.
  • We tap the collective intelligence of Nixon Peabody to deliver the best thinking and create value for our clients throughout the world.
  • We lean forward into the future, together with our clients, to see and prepare for what’s ahead.
  • Working together, we handle complex challenges in litigation, real estate, corporate law and intellectual property anywhere in the world.
  • In terms of our IP practice, we provide a full offering of patent services, including prosecution, litigation and transactions.

Our lawyers develop, maintain and license valuable patent portfolios, as well as provide counselling, opinions and evaluations on:

  • patentability;
  • competitors’ patents;
  • due diligence;
  • inventorship/ownership investigations;
  • corrective actions for existing patents; and
  • patent interferences/inter partes reviews/covered business method reviews and re-issues.

One-third of our lawyers and patent agents, including 15 PhDs, hold undergraduate and/or advanced degrees in biology, biochemistry, chemistry, microbiology or some related area. These backgrounds enable us to leverage top-notch legal skills, scientific and engineering knowledge, and business acumen to help our clients extract maximum value from their patents, gain a competitive advantage and minimise risk. In 2020 we filed 1,364 patent applications in the United States and 776 foreign patent applications.

Our first-chair trial lawyers are experienced in all facets of patent litigation, including jurisdiction and venue motions, discovery, use of experts, claim construction (Markman) hearings, dispositive motions, trials and appeals. Since 2010, we have handled more than 50 cases in the Eastern District of Texas, 20 disputes in Delaware and approximately 30 matters in the Northern District of California.

We are also well-versed in handling post-grant review proceedings before the US Patent and Trademark Office. These proceedings include inter partes reviews and covered business method reviews. We have been involved in more than 45 proceedings where we have represented either the petitioner or the patent owner before the Patent Trial and Appeal Board.

We have particular strength in representing university technology transfer clients, including Brown, Caltech, Harvard, the University of Southern California, Vanderbilt and the University of Washington. For more than 20 years, we have helped tech transfer clients identify, protect, monetise and enforce their intellectual property. Our goal is to help these clients bring their technologies and innovations to market and extract the maximum value from their IP assets. Consequently, we know the challenges facing these institutions when it comes to enforcing their IP assets, especially against consumer products, electronics and other companies for whom litigation (or the meaningful threat of it) is often the only viable option to secure a licence. Our representation of the University of California, Santa Barbara in a groundbreaking patent enforcement campaign involving filament LED lighting technology is an example of cutting-edge legal work in this area.

In addition, our IP lawyers work with a number of companies as well as leading research institutes and academic medical centres that are active in the microbiome, biotech and gene therapy space. We also keep our clients up to date on innovative topics through publications such as Gut check: Microbiome patent update, which summarises recently issued microbiome patents, and Patent Plantings, which examines trends and regulations impacting on patents in the biotech agribusiness space.

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