Marcus Simon
PEOPLE

Marcus Simon

Partner
simon.marcus@dorsey.com
Salt Lake City P +1 (801) 933-7379 F +1 (801) 933-7373 Seattle P +1 (206) 903-8800

Overview

MARCUS PROVIDES COST-EFFECTIVE AND PRACTICAL LEGAL ADVICE TO HELP COMPANIES PROTECT THEIR INVENTIONS AND KEEP THEM OUT OF TROUBLE.

Marcus has over 18 years of experience counseling clients on patent portfolio development and management, intellectual property litigation, intellectual property licensing, and intellectual property due diligence. His clients span a number of different industries, including medical devices, health care, life sciences, university research and development, energy, mining, and aerospace.  A significant part of Marcus’ practice includes representing clients from outside of the United States before the U.S. Patent and Trademark Office, including clients from Europe, China, and Israel.

Marcus helps clients analyze the risks associated with introducing new products, including analyzing patent infringement and patent validity issues, and preparing related opinions.  When a client needs assistance dealing with an intellectual property infringement or enforcement issue, Marcus works with the client and Dorsey intellectual property trial attorneys to provide the most cost-effective strategy to realize the client's goals. 

U.S. patents in the medical device field prosecuted by Marcus have been successfully asserted at the district court to obtain a multi-million dollar judgement.  Marcus has served as opinion counsel for a defendant in a patent infringement case in which the patent at issue was found invalid and not infringed at the district court along with the decision being upheld by the Court of Appeals for the Federal Circuit.  He has performed due diligence investigations for investors considering acquiring companies with large patent portfolios.

While Marcus has particular experience with medical device, materials science, and mechanical technologies, his patent prosecution and counseling experience covers a wide range of technology areas. Some examples of specific technologies he has worked with include invasive and external urinary catheters, stents, bone implants, diagnostic devices, and cardiovascular devices; polycrystalline diamond cutting elements and bearings; physical and process metallurgy; chemical compositions and processes; composite materials; food science and technology; osmosis systems; and lasers, fiber optics, photodetectors, and other photonic devices.

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

News & Press Mentions

IAM Patent 1000 Recognizes 13 Dorsey Attorneys in World’s Leading Patent Professionals 2021
Twenty-three Dorsey Attorneys Named to Utah Legal Elite
IAM Patent 1000 Recognizes 13 Dorsey Attorneys in World’s Leading Patent Professionals 2020
Twenty-two Dorsey Attorneys Named to Utah ‘Legal Elite’
IAM Patent 1000 Recognizes 12 Dorsey Attorneys in World’s Leading Patent Professionals 2019
Chambers USA 2019 Recognizes Dorsey Lawyers and Practices
Twenty Dorsey Attorneys Named to Utah ‘Legal Elite’
Chambers USA 2018 Recognizes Dorsey Lawyers and Practices in Salt Lake City
Seventeen Dorsey Attorneys Named to Utah ‘Legal Elite’
Chambers USA 2017 Recognizes Dorsey Lawyers and Practice Groups in Salt Lake City
Chambers USA 2017 Recognizes Dorsey Lawyers and Practices
Dorsey Partner Marcus Simon Comments on Who Owns an Idea
Sixteen Dorsey Attorneys Named Utah Legal Elite
Dorsey Nationally Ranked and Named Trademark Law Firm of the Year by "U.S. News – Best Lawyers" Best Law Firms
Chambers USA 2016 Recognizes Dorsey Lawyers and Practice Groups in Salt Lake City
Chambers USA 2016 Ranks Dorsey Lawyers and Practices
Fifteen Dorsey Attorneys Named Utah ‘Legal Elite’
Chambers USA 2015 Recognizes Dorsey Lawyers and Practice Groups in Salt Lake City
Dorsey Named One of Top Trademark Firms
Dorsey Adds Patent Practice in Salt Lake City Office with Experienced IP Partner Marcus Simon

Events & Speaking Engagements

Montana Intellectual Property and Corporate Roadshow

Select Presentations

Industries & Practices

Patent Prosecution, Portfolio Strategy & Management
  • Energy & Natural Resources
  • Food, Beverage & Agribusiness
  • Healthcare & Life Sciences
  • Intellectual Property
  • Intellectual Property Litigation
  • Israel
  • Mining
  • Oil & Gas
  • Patent Prosecution, Portfolio Strategy & Management
  • Sustainability
  • Technology
  • Technology Commerce
  • Trademark, Copyright & Advertising

Professional & Civic

Professional Achievements

  • International Association for the Protection of Intellectual Property (AIPPI)
  • Association of University Technology Managers (AUTM)
  • American Intellectual Property Law Association (AIPLA)
  • Intellectual Property Owners Association (IPO)
  • International Trademark Association (INTA)
  • ASM International – The Materials Information Society 
  • California Polytechnic State University - San Luis Obispo Alumni Ambassador for Utah

Accolades

Chambers USA 2021  Ranked in Chambers USA 2020  Ranked in Chambers USA 2019 Leading Individual  
Chambers USA 2018 Leading Individual  Ranked in USA Chambers 2017 Leading Individual  Ranked In - USA Chambers and Partners 2016 - Leading Individual   
  • Listed in Best Lawyers in America©, 2020-2022
  • Named one of “America’s Leading Business Lawyers” by Chambers USA (Intellectual Property), 2016-2021
  • Recognized in IAM Patent 1000 - World's Leading Patent Practitioners, 2019-2021
  • Named a “Recognized Practitioner” by Chambers USA (Intellectual Property), 2015
  • Listed in Utah Business Magazine Utah Legal Elite, 2012-2021 - Intellectual Property
  • Listed in Super Lawyers - Mountain States Rising Stars, 2010-2012
Marcus Simon