Marcus Simon
PEOPLE

Marcus Simon

Partner
simon.marcus@dorsey.com
Salt Lake City P +1 (801) 933-7360 F +1 (801) 933-7373 Seattle P +1 (206) 903-8800

Overview

MARCUS HELPS COMPANIES WITH COMPLEX TECHNOLOGIES CREATE INTELLECTUAL PROPERTY STRATEGIES TO PROTECT THEIR INVENTIONS.

Marcus counsels clients on a wide range of intellectual property issues, including patent portfolio development and management, intellectual property litigation, intellectual property licensing, intellectual property acquisition, and intellectual property due diligence. His clients span a number of different industries, including energy, mining, life sciences, health care, medical devices, defense, aerospace, and university research and development.

While Marcus has particular experience with energy, mining, and medical device technologies, his patent prosecution and counseling experience covers a wide range of technology areas, including materials science, chemistry, biotechnology, photonics, mechanical and electro-mechanical devices, and industrial designs for various different technologies. Some examples of specific technologies he has worked with include polycrystalline diamond cutting elements and bearings; drill bits and bearing apparatuses used in oil and gas exploration drilling systems; tunnel boring machines for mining; medical devices, including stents, catheters, bone implants, neuromodulation devices, cardiovascular devices, implantable and wearable ophthalmic corrective devices, drug delivery devices, urinary devices, renal devices, and nickel-titanium-based superelastic and shape memory alloys for stents and other implantable medical devices; chemical separation devices, including chromatography systems and stationary phases; combustion control systems; food science and technology, including food compositions, food processing, and food packaging; composite materials; and lasers, fiber optics, photodetectors, and other photonic devices.

In the patent field, Marcus helps his clients analyze the risks associated with introducing new products, including analyzing infringement and validity issues, and preparing related opinions.  When a client needs assistance dealing with an intellectual property infringement or enforcement issue at the district court or the Patent Trial and Appeal Board (PTAB), Marcus works with the client and Dorsey intellectual property trial attorneys to provide the most cost-effective strategy  to realize the client's goals.

Before practicing law, Marcus gained practical engineering experience as a materials engineer at a large aerospace corporation that designs solid-fuel rocket motors.

Education & Admissions

University of Utah (J.D., 2003)

University of Pennsylvania (M.S., Materials Science and Engineering, 1998)

California Polytechnic State University, San Luis Obispo (B.S., Materials Engineering, 1997), magna cum laude

Admissions

  • United States Patent and Trademark Office
  • Utah
  • Washington

News & Resources

Events & Speaking Engagements

Montana Intellectual Property and Corporate Roadshow

Select Presentations

Industries & Practices

Patent Prosecution, Portfolio Strategy & Management
Trademark, Copyright, Advertising & Brand Management
  • Clean Technology
  • Energy
  • Food, Beverage & Agribusiness
  • Health Care
  • Intellectual Property Litigation
  • Israel
  • Mining & Natural Resources
  • Oil & Gas
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology Commerce
  • Trademark, Copyright, Advertising & Brand Management

Professional & Civic

Professional Achievements

  • American Intellectual Property Law Association (AIPLA)
  • Chair of Materials Science and Natural Resource Technologies Subcommittee - AIPLA Chemical Practice Committee
  • The David K. Winder Intellectual Property American Inn of Court
  • Intellectual Property Owners Association (IPO)
  • International Trademark Association (INTA)
  • International Association for the Protection of Intellectual Property (AIPPI)
  • ASM International – The Materials Information Society 
  • California Polytechnic State University - San Luis Obispo Alumni Ambassador for Utah

 

Accolades

Chambers USA 2018 Leading Individual  Ranked in USA Chambers 2017 Leading Individual  Ranked In - USA Chambers and Partners 2016 - Leading Individual   
  • Named one of “America’s Leading Business Lawyers” by Chambers USA (Intellectual Property), 2016-2018
  • Named a “Recognized Practitioner” by Chambers USA (Intellectual Property), 2015
  • Listed in Utah Business Magazine Utah Legal Elite, 2012-2018 - Intellectual Property
  • Listed in Super Lawyers - Mountain States Rising Stars, 2010-2012
Marcus Simon