Marshall, Gerstein & Borun LLP is exclusively focused on full service intellectual property law, and protects, enforces and transfers the intellectual property of its clients worldwide. Nearly half of the Firm’s professionals have worked in-house as general counsel, patent counsel, technology transfer managers, scientists, engineers, or consultants. Marshall Gerstein’s seasoned professionals offer deep experience in devising and executing intellectual property strategy and comprehensive IP solutions for IP Litigation, Patent Prosecution, IP Transactions and Trademarks & Copyrights. Chambers & Partners has ranked Marshall Gerstein as “first-rate for litigation,” and as having “one of the best biotechnology practices in the entire country.” Corporate Counsel magazine lists the Firm as a “Go-To Law Firm of the Top 500 Companies” for intellectual property and litigation. Marshall Gerstein is also ranked as a top intellectual property law firm by Managing IP, Fortune, Intellectual Property Today, Intellectual Asset Management, and World Trademark Review magazines. Learn more at www.marshallip.com.
Clients turn to Marshall Gerstein for their most visible, high-stakes IP cases, to minimize their risk of third party IP assertions and to provide solid defenses that stand the test of time. Our size, structure, and specialized practice give us flexibility to handle litigation matters from bet-the-company, to non-practice entities, with an aggressive, client-centered approach. We are committed to hiring and promoting exceptional, proven advocates that exhibit both keen technical ability and relatable-but-aggressive advocacy. Generally, our litigation teams are lean, our rates highly competitive, our work efficient, and our strategies creative.
It is Marshall Gerstein’s experience and practice to partner with our clients to develop defense theories and litigation strategies that achieve their objectives with economy of service. Our attorneys have expertise in virtually every jurisdiction and maintain credibility among judges and opposing counsel. In addition to our district court and trial experience, clients look to us for other defensive (and offensive) IP strategies, including inter partes review, covered business method review, and reexamination. Marshall Gerstein treats these more cost-effective tools as integral to litigation strategy.
Post-Grant Patent Proceedings
Since the Leahy-Smith America Invents Act (“AIA”) was enacted in 2011, Marshall Gerstein has considerable experience using its new opposition procedures, both singly and in combination with pre-existing options. Whether your goal is to optimize your intellectual property portfolio, clear the way for investment in new products, or resolve threatened or ongoing litigation, we can help you choose and execute the strategy best suited to your needs. We assist clients with:
- Inter partes reviews
- Post grant reviews
- Covered business method patent reviews
- Derivation proceedings
- Supplemental examinations
- Ex parte reexaminations
- Third-party submissions
Marshall, Gerstein’s team of patent prosecution attorneys, patent agents and technical specialists is among the larger patent prosecution practices in Chicago and has the advantage of broad and deep expertise across every major technical field and industry in managing large and interrelated U.S. and foreign patent portfolios. The Firm helps clients obtain and license patents, enforce patents against infringers and defend against charges of infringement. Experienced at preparing validity and infringement opinions, Marshall Gerstein has the knowledge and understanding of what is needed to make these opinions stand up in litigation contexts. The Firm is, and has always been, at the forefront of using new procedures at the U.S. Patent and Trademark Office (USPTO) that result in creative solutions for clients. Marshall Gerstein’s prosecution attorneys regularly use reissue, reexamination and interference proceedings to supplement, or as an integral part of achieving, clients’ overall litigation and prosecution goals. Drawing on the experience of the Firm’s litigation and transaction practices, we help clients maximize their return on investment in innovation.
As seasoned transaction attorneys with experience as in-house counsel and technology transfer managers, Marshall Gerstein’s professionals understand clients’ perspectives and how to craft comprehensive agreement structures that implement their priorities, minimize unallocated risks and allow for changing circumstances. The Firm employs creative deal terms and best practices from the breadth of its clients’ industries. Marshall Gerstein’s professionals provide thoughtful and practical counsel on intellectual property policy matters and Federal grant compliance. Marshall Gerstein negotiates as a seamless member of clients’ teams – appreciating that fair and intelligible deal terms result in successful long-term ventures. The ability to link the law, science and business means that the Firm understands the nuances of the intellectual property rights at stake, the technical subject matter to be protected, and the strategies needed to get the deal done in an accurate, timely and cost-effective manner.
Trademark & Copyright
Marshall Gerstein’s attorneys and paralegals have extensive experience in all aspects of trademark selection, registration, enforcement, and litigation. Marshall Gerstein’s professionals work closely with clients through every phase of the branding process to secure and enhance trademark rights in the United States. We use sophisticated online systems to conduct searches, file trademark applications, research and conduct opposition and cancellation proceedings, monitor and maintain our clients’ registered marks, and monitor trademark databases worldwide. In collaboration with a network of trusted colleagues in foreign countries, the Firm oversees and manages global trademark portfolios and enforcement programs for its clients. The Firm’s trademark attorneys litigate trademark infringement and dilution cases, defend clients against allegations of infringement, and frequently advise about the limits of IP rights, enabling clients to make informed decisions about how best to establish and defend proprietary rights in social media.