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Jonathan R. Sick
Shareholder

Email. jsick@mcandrews-ip.com
Tel. (312) 775-8000

Practice Areas
Chemical, Medical Technology and Biotechnology Intellectual Property; Patent Interferences; Patent Litigation; Patent Prosecution; Patent Licensing; Appellate Practice; Trademark Counseling.

Education
University of Illinois, B.S., Chemical Engineering, with distinction, 1992
Chicago-Kent College of Law, J.D., with high honors, 1995

Bar Admissions
Member of the bar of the U.S. Court of Appeals for the Federal Circuit, as well as the U.S. District Court for the Northern District of Illinois.  Registered to practice before the U.S. Patent and Trademark Office.

Professional Experience
Since joining McAndrews, Held & Malloy in 1996, Jonathan Sick has developed a broad range of experience in patent interference practice, patent infringement litigation, appellate practice, patent prosecution, and trademark practice.  With respect to patent matters, Jonathan has considerable expertise in advising and representing clients in the chemical, chemical engineering, pharmaceutical, biotechnology, and medical device industries.  Highlights from his accomplishments over the past several years include:

·  Representing chemical, biotechnology, and medical device industry clients in interference proceedings before the Board of Patent Appeals and Interferences, and guiding those clients in patent prosecution strategies designed to provoke interferences with competitors' patents.

·  Negotiating favorable litigation settlements on behalf of smaller clients.

·  Obtaining a key patent covering a competitor's product by employing an aggressive and creative patent prosecution strategy, therefore creating an infringement liability risk for the competitor and allowing the client to obtain significant leverage in licensing negotiations.

·  Playing a key role in presenting successful appeals to the Court of Appeals for the Federal Circuit involving the medical device and pharmaceutical industries, a role which enabled him to become well-versed in the regulatory issues that are an integral part of these fields.

·  Taking a leadership role in high profile patent infringement litigation in the chemical and medical device industries by conducting direct and cross examination of witnesses at trial, by successfully arguing important motions, and by taking and defending depositions of critical fact and expert witnesses.

Prior to joining McAndrews, Held & Malloy, Jonathan served as a judicial clerk for the Honorable Rebecca R. Pallmeyer, then a Magistrate Judge, and now a District Judge of the U.S. District Court for the Northern District of Illinois. During his tenure as a clerk, Jonathan gained invaluable experience and insights into the litigation process from the point of view of the decision-maker.

Jonathan graduated with high honors from Chicago-Kent College of Law in 1995, where he was inducted into The Order of the Coif, and where he served as a Notes and Comments Editor of the Chicago-Kent Law Review.  Jonathan holds a Bachelors of Science degree in Chemical Engineering from the University of Illinois at Urbana, where he graduated with distinction in 1992, having served chemical engineering internships at Universal Oil Products Company and Argonne National Laboratory.  Jonathan is an Eagle Scout, and is actively involved in the National Eagle Scout Association.

Recent Speaking Engagements:

Voice interview regarding In re Seagate Technology, Intellectual Property Lawcast, Vol. XIII, No. 13 (September 2007)

Panelist and presenter for webcast "Medtech's Changing Patent Landscape," sponsored by MX Magazine, March 21, 2007.

Presentation given to the Rochester Intellectual Property Law Association on May 24, 2006:  "The Proposed Post-Grant Opposition Proceeding."


Publications
'The Reform Act of 2007,' September 3, 2007 edition of the National Law Journal
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'Patent Reform Uncertainties,' January/February 2007 Issue of MX Magazine, pp. 62-64
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'The Changing Patent Landscape,' May/June 2006 Issue of MX Newsletter, July August 2006 Issue of MX Magazine, pp. 52-55
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'The Proposed Post-Grant Opposition Procedure: How It Will Work and How You Can Prepare To Take Advantage Of It,' Intellectual Property Today, Vol. 13, No. 2, pp. 36-38 (Feb. 2006)
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'Something You Will Want To Remember About Reissue Patent: The Recapture Rule,' Anderws Litigation Reporter, Intellectual Property, Vol. II, Issue 6 (July 2004)
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