Marcus S. Simon - Equity Shareholder

Mr. Simon is a member of W|N’s patent and trademark prosecution groups.  Mr. Simon’s practice is focused on patent prosecution and related counseling in a wide range of technology areas including materials science, chemistry, biotechnology, electronics, photonics, and mechanical and electro-mechanical devices. Examples of specific technologies include superabrasive and superhard materials used in polycrystalline diamond cutting elements and bearings, oil and gas exploration drilling systems, nanomaterials, physical metallurgy such as superelastic and shape memory alloys, implantable medical devices such as stents and bone implants, chemical separation devices, semiconductor devices and processing, lasers, fiber optics, and orthotic braces.

Mr. Simon is experienced in working with the USPTO and regularly conducts interviews with examiners.  He is also experienced with post-grant proceedings at the U.S. Patent and Trademark Office for improving offensive and defensive positions of clients including reexamination and reissue proceedings. 

In addition to Mr. Simon’s patent prosecution practice, his experience includes trademark preparation and prosecution, patent and trademark portfolio management, patent non-infringement and patent invalidity opinions, intellectual property due diligence evaluations, intellectual property licensing, and pre-litigation counseling.

Before practicing law, Mr. Simon worked at a large aerospace corporation as a materials engineer specializing in metallurgy and fracture mechanics.

Primary Practice Focus

• U.S. Prosecution of IP
  • U. S. Patent Prosecution
  • U.S. Trademark Prosecution
  • Copyright Registrations

• International Prosecution of IP
  • International Patent Prosecution
  • International Trademark Prosecution

Other Practice Experience

• Licensing, Other Transactional Work & Client Counseling
  • Patentability Opinions
  • Patent Infringement Opinions
  • Defensive Opinions of Non-infringement and Design Around Strategies
  • Non-Disclosure Agreements
  • Joint Development Agreements
  • Employment Agreements & Invention Ownership
  • Research Agreements
  • Patent Portfolio Planning

Technical Experience

• Pharmaceutical, Chemical, Biotechnology & Life Sciences
  • Material Sciences
  • Chemical Compositions
  • Biochemistry
  • Medical and Dental Device Technology

• Physics/Optics

• Electronics & Electrical Engineering
  • Electrical & Electromechanical Systems
  • Semiconductors
  • Telecommunications

• Mechanics & Mechanical Engineering
  • Medical and Dental Devices
  • Thermal Science Systems
  • Automotive Systems
  • Manufacturing Equipment

Education

• J.D., University of Utah, 2003
• M.S., University of Pennsylvania, Materials Science & Engineering, 1998
• B.S. magna cum laude, California Polytechnic State University, Materials Engineering, 1997

Professional Admissions and Associations

• Utah State Bar
• Washington State Bar
• Registered Patent Attorney
• American Intellectual Property Law Association (AIPLA)
• International Trademark Association (INTA)
• ASM International

*Admitted also in Washington