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Our Team 

Jonathan R. Sick
Shareholder

jsick@mcandrews-ip.com
(312) 775-8196

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Since joining McAndrews, Held & Malloy in 1996, Jonathan Sick has developed a broad range of experience in patent post grant proceedings, freedom to operate analyses, intellectual property due diligence, patent portfolio management and trademark practice.  With respect to patent matters, Jonathan has considerable expertise in advising and representing clients in the chemical, chemical engineering, pharmaceutical, biotechnology and medical device industries.

Highlights from his accomplishments over the past several years include: successfully representing clients in post grant proceedings before the Board of Patent Appeals and Interferences and more recently the Patent Trial and Appeal Board; guiding chemical, biotechnology, and medical device industry clients in aggressive patent prosecution strategies designed to limit competitor patent portfolios and position the client favorably with respect to competitor products; managing large-scale due diligence and freedom to operate programs in the life sciences industry; and counseling a client through a favorable outcome in an opposition proceeding before the European Patent Office.

Related Experience

  • Judicial clerk for the Honorable Rebecca R. Pallmeyer, Magistrate Judge of the U.S. District Court for the Northern District of Illinois

Presentations

  • “America Invents Act: Practical Considerations for Practitioners and Inventors,” ABA Webinar, December 11, 2012
  • “America Invents Act: Understanding the New Post-Grant and Inter Partes Review Proceedings,” ABA Webinar, speaker and moderator, October 19, 2012
  • “Trial and Discovery Practice Before the New USPTO Patent Trial & Appeal Board,” ABA Annual Meeting, August 3, 2012
  • “Patent Portfolio Management Strategies and Considerations under America Invents Act,” ABA Annual Meeting, August 3, 2012
  • “Contested Patent Office Proceedings:  Why They Should Not Be Overlooked As Part Of Your IP Strategy,” ABA 26th Annual Intellectual Property Law Conference, April 8, 2011

Publications

  • A Strategy Primer for the New Post-Issuance Patent Office Proceedings, Intellectual Property Today, pp. 31-33 (May 2013) View File
  • The Reform Act of 2007, National Law Journal, (September 2007)
  • Patent Reform Uncertainties, MX Magazine, pp. 62-64, (January/February 2007)
  • The Changing Patent Landscape, MX Magazine, pp. 52-55 (July/August 2006)
  • The Proposed Post-Grant Opposition Procedure: How It Will Work and How You Can Prepare To Take Advantage Of It, Intellectual Property Today, pp. 36-38 (Feb. 2006)

Professional & Community Involvement

  • Member of Council, American Bar Association Intellectual Property Law Section
  • Executive Committee of the Chicago Chapter, National Eagle Scout Association

Areas of Practice

Industries

Bar Admissions / Registrations

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. Patent and Trademark Office

Education

  • Chicago-Kent College of Law, J.D., with high honors
  • University of Illinois, B.S., Chemical Engineering, with distinction