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
- United States Patent and Trademark Office
News & Resources
News & Press Mentions
Events & Speaking Engagements
- “Protecting Your Intellectual Property: Practical Strategies for Managing Patent Rights,” November 10-11, 2015
- “Functional Claiming After Williamson,” July 15, 2015
- “Third-Party Challenges to Patents and Patent Applications at the USPTO,” May 27, 2015
- “Practical Strategies for Managing Patent Rights After the America Invents Act (AIA),” Cleantech Open Organization Workshop, Salt Lake City, Utah, June 23, 2014
- “Functional Language in Apparatus Claims in US Patent Practice (not invoking § 112, ¶6): Overview and Practice Suggestions,” Intellectual Property Practice in Israel Committee, American Intellectual Property Law Association, March 23, 2014
- “Inequitable Conduct After Therasense,” September 6, 2013
- “Traversing Obviousness Rejections in Mechanical Patent Applications at the USPTO,” April 21, 2013
Industries & Practices
- Energy & Natural Resources
- Food, Beverage & Agribusiness
- Intellectual Property Litigation
- Oil & Gas
- Patent Prosecution, Portfolio Strategy & Management
- Technology Commerce
- Trademark, Copyright, Advertising & Brand Management
Professional & Civic
- 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
- 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, 2012-2019 - Intellectual Property
- Listed in Super Lawyers - Mountain States Rising Stars, 2010-2012