Jonathan Sick is a Shareholder at McAndrews, which he joined in 1996. Jonathan has experience in a wide range of IP-related areas of law, including freedom to operate analyses, intellectual property due diligence, patent portfolio management, patent post-grant proceedings, and trademark practice. With respect to patent matters, Jonathan represents clients in the chemical, chemical engineering, pharmaceutical, biotechnology, and medical device industries.
Over the past several years, Jonathan’s work has included large-scale freedom to operate and opinion programs in the life sciences and chemical industries, working closely with European counsel to achieve successful outcomes in numerous opposition proceedings before the European Patent Office, and successfully representing clients in post-grant proceedings before the Patent Trial and Appeal Board.
Jonathan received his B.S. in Chemical Engineering with distinction from the University of Illinois and his J.D. magna cum laude from Chicago-Kent College of Law.
EDUCATION
Chicago-Kent College of Law, J.D., with high honors
University of Illinois, B.S., Chemical Engineering, with distinction
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
Practices
IP Transactions
Post-Grant Practice
Trademarks & Copyrights
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
Industries
Chemical
Medical Devices
Life Sciences
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
“The State of Subject Matter Eligibility Law and Its Impact on the Incentive to Innovate.” ABA 33rd Annual Intellectual Property Law Conference, April 20, 2018 (program moderator and organizer)
“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)
The Reform Act of 2007, National Law Journal, (September 2007)
Patent Reform Uncertainties, MX Magazine, pp. 62-64, (January/February 2007)
Professional & Community Involvement
Executive Committee of the Chicago Chapter, National Eagle Scout Association (Emeritus)
Judicial clerk for the Honorable Rebecca R. Pallmeyer, Magistrate Judge of the U.S. District Court for the Northern District of Illinois
“The State of Subject Matter Eligibility Law and Its Impact on the Incentive to Innovate.” ABA 33rd Annual Intellectual Property Law Conference, April 20, 2018 (program moderator and organizer)
“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
A Strategy Primer for the New Post-Issuance Patent Office Proceedings, Intellectual Property Today, pp. 31-33 (May 2013)
The Reform Act of 2007, National Law Journal, (September 2007)
Patent Reform Uncertainties, MX Magazine, pp. 62-64, (January/February 2007)
Executive Committee of the Chicago Chapter, National Eagle Scout Association (Emeritus)
