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Jonathan R. Sick
Shareholder
Email. jsick@mcandrews-ip.com
Tel. (312) 775-8196
Practice Areas
Chemical, Medical Technology and Biotechnology Intellectual Property; Inter Partes Patent Office Proceedings; Patent Litigation; Patent Prosecution; Patent Due Diligence Investigations; Trademark Counseling.
Education
University of Illinois, B.S., Chemical Engineering, with distinction, 1992
Chicago-Kent College of Law, J.D., with high honors, 1995
Bar Admissions
Member of the bar of the U.S. Court of Appeals for the Federal Circuit, as well as the U.S. District Court for the Northern District of Illinois. Registered to practice before the U.S. Patent and Trademark Office.
Professional Experience
Since joining McAndrews, Held & Malloy in 1996, Jonathan Sick has developed a broad range of experience in patent inter partes proceedings (inter partes reexamination and interferences), patent infringement litigation, appellate practice, patent prosecution, 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:
• Representing chemical, biotechnology, and medical device industry clients in inter partes reexamination proceedings and interference proceedings before the Board of Patent Appeals and Interferences.
• Guiding chemical, biotechnology, and medical device industry clients in aggressive patent prosecution strategies designed to limit competitor patent portfolios, provoke interferences with competitor patents, and position the client favorably with respect to competitor products.
• Litigating patent infringement cases in the chemical and medical device industries.
Prior to joining McAndrews, Held & Malloy, Jonathan served as a judicial clerk for the Honorable Rebecca R. Pallmeyer, then a Magistrate Judge, and now a District Judge of the U.S. District Court for the Northern District of Illinois.
Jonathan is the Board President of the Route 66 Theatre Company. Jonathan is also an Eagle Scout, and sits on the Executive Committee of the Chicago Chapter of the National Eagle Scout Association.
Professional Involvement
2010-2012 Chair of Committee 104 (Inter Partes Patent Office Proceedings), American Bar Association Intellectual Property Law Division
Recent Speaking Engagements
Moderator of Panel Presentation at the ABA 26th Annual Intellectual Property Law Conference, "Contested Patent Office Proceedings: Why They Should Not Be Overlooked As Part Of Your IP Strategy" (April 8, 2011)
Presentation given to the Chicago Arts and Business Council on April 16, 2011: "Copyright Issues in the Performing Arts"
"Inter Partes Reexamination Basics," MHM CLE Presentation (July 2010)
"Duty of Disclosure, Candor, and Good Faith," MHM CLE Presentation (July 2009)
Presentation given at the 2008 Annual Meeting of the American Chemical Society (August 20, 2008): "Strategic Patent Searching: Now A Viable Tool For Guiding Your Life Sciences Product To A Successful Commercial Launch."
Voice interview regarding In re Seagate Technology, Intellectual Property Lawcast, Vol. XIII, No. 13 (September 2007)
Panelist and presenter for webcast "Medtech's Changing Patent Landscape," sponsored by MX Magazine, March 21, 2007.
Presentation given to the Rochester Intellectual Property Law Association on May 24, 2006: "The Proposed Post-Grant Opposition Proceeding."
Selected Publications
'The Reform Act of 2007,' September 3, 2007 edition of the National Law Journal
View File
'Patent Reform Uncertainties,' January/February 2007 Issue of MX Magazine, pp. 62-64
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'The Changing Patent Landscape,' May/June 2006 Issue of MX Newsletter, July August 2006 Issue of MX Magazine, pp. 52-55
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'The Proposed Post-Grant Opposition Procedure: How It Will Work and How You Can Prepare To Take Advantage Of It,' Intellectual Property Today, Vol. 13, No. 2, pp. 36-38 (Feb. 2006)
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'Something You Will Want To Remember About Reissue Patent: The Recapture Rule,' Andrews Litigation Reporter, Intellectual Property, Vol. II, Issue 6 (July 2004)
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