Marshall, Gerstein & Borun LLPPartner

William K. Merkel

About William K. Merkel

William K. Merkel is a lawyer practicing patent interferences and oppositions, patent prosecution, biotechnology and 5 other areas of law. William received a B.A. degree from Knox College, and has been licensed for 32 years. William practices at Marshall, Gerstein & Borun LLP in Chicago, IL.

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Services

Areas of Law

  • Technology and Science 1
    • Biotechnology
  • Other 7
    • Patent Interferences and Oppositions
    • Patent Prosecution
    • Cleantech and Renewables
    • Medical Devices
    • Non-Profit Technology Transfer
    • Pharmaceutical
    • Patent Application

Practice Details

  • Firm Information
    Position
    Partner
    Firm Name
    Marshall, Gerstein & Borun LLP

Experience

  • Bar Admission & Memberships
    Admissions
    1994, Illinois
    U.S. District Court, Northern District of Illinois
    U.S. Patent and Trademark Office
    Bar Fellowship
    he discovered the Pan Operon, revealing the organization of genes involved in pantothenate biosynthesis, as reported in the peer-reviewed literature. This research experience and advanced training equip him with the ability to thoroughly understand the complex scientific technologies of his clients. He has been selected by the Chicago Law Bulletin's Leading Lawyer Network as a "Leading Lawyer."

    Dr. Merkel received his J.D. from New York University School of Law and his Ph.D. in Biological Sciences from the University of Illinois at Chicago. He earned a B.A. in Economics and Psychology from Knox College.

    Publications

    · "Patent Exhaustion: A Tireless Limit on Patent Rights," Bioprocessing Journal, Spring 2013.

    · William K. Merkel, Ph.D. and Vivien C. Nielsen, Ph.D. "Induced Patent Infringement Breaks Free from Direct Infringement: The Implications for Bioprocessing," BioProcessing Journal, Winter 2012/2013.

    "IP: The Supreme Court levels its eye at agricultural GMOs," InsideCounsel. Jan. 22, 2013.

    · "IP: Value in the backwaters of patent law," InsideCounsel. Dec. 25, 2012.

    · "IP: America Invents Act implementation ends with a bang,"InsideCounsel. Nov. 27, 2012.

    · "Take these steps to ensure your TTO is ready for AIA," Technology Transfer Tactics, April 2012.

    · "Mayo v. Prometheus: A looming 'disaster' for tech transfer?" Technology Transfer Tactics, April 2012. (Featured quotes).

    Recent Client Work

    · Successfully prosecuted domestic and foreign patent applications directed to attenuated viral therapeutics for treatment of cancer; also directed successful defenses of two European patents in opposition proceedings.

    · Advised client on global patenting strategy for greentech agricultural technologies, and protected the technologies by securing comprehensive domestic and foreign patents.

    · Counseled start-up companies and academic institutions on intellectual property strategies able to accommodate the recent economic downturn.

    · Counseled clients conducting due diligence inquiries relating to intellectual property portfolios.

    Publications

    · Marshall, Gerstein & Borun Attorneys Authoring a Four-Part Series in BioProcessing Journal
    February 21, 2013

    · William K. Merkel Authors Articles for InsideCounsel Magazine
    January 22, 2013

  • Education & Certifications
    Law School
    New York University School of Law
    J.D.
    Other Education
    Knox College
    B.A.
    Economics and Psychology

    University of Illinois at Chicago
    Ph.D.
    Biological Sciences

William K. Merkel

Partner at Marshall, Gerstein & Borun LLP
Not yet reviewed

6300 Willis Tower, 233 South Wacker DriveChicago, IL 60606-6357U.S.A.

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