Marc V. Richards
Shareholder

With almost 25 years of experience in intellectual property law, Marc Richards has helped secure and defend the innovations for the world’s largest high performing companies and for the newest high tech start-ups.  As a seasoned attorney, Marc leads large client teams and co-chairs the Chemical, Energy and Agriculture Industry Practice Group at Brinks Gilson & Lione.  His experience in patent interference proceedings translates into confident navigation of the new inter partes review and post grant review trials before the PTAB.

Marc focuses his practice in a broad range of technologies including computer software, financial services, material science, hydrocarbon and chemical processing, and pharmaceutical therapeutics. He also counsels clients on patent infringement and invalidity investigations, licensing and trade secret matters. Clients often look to Marc for advice in protecting non-traditional innovations and emerging technologies. Having traveled the globe for a half dozen years as an engineer and then cutting his teeth as a patent attorney prosecuting global portfolios extending over 40 countries, Marc brings a wealth of international IP experience to his clients’ advantage.

Marc has lectured internationally on numerous topics of intellectual property law and is active in several legal associations. He currently serves as Treasurer for the AIPPI-US Group, a division of the AIPLA. He was Chair of the AIPPI Q217 Working Committee at AIPPI Hyderabad 2011. He previously served on the Board of Directors and was Treasurer for the Intellectual Property Law Association of Chicago (IPLAC).

Education
  • B.S., Chemical Engineering
    Washington University, 1982
  • J.D., cum laude
    Loyola University Chicago School of Law, 1993
  • M.B.A., with honors
    The University of Chicago, 1993
Bar Admissions
  • Illinois
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Patent & Trademark Office
Technical Background
  • Analog
  • Biopharma
  • Business Methods
  • Software
Experience | Legal

Brinks Gilson & Lione, Chicago, Illinois
Shareholder, 2000-Present
Associate, 1993-1999
Law Clerk, 1992-1993

Loyola University Chicago
Consumer Legal Clerk, 1992

Experience | Non-Legal
UOP, Des Plaines, Illinois
Senior Instrument Engineer, 1988-1990
Field Technical Service Engineer, 1982-1988
Experience | Clerkships & Internships
U.S. District Court, Northern District of Illinois
Judicial Student Extern, Judge John A. Nordberg, 1992
Forward Thinking
in the media
February 27, 2017
On February 27, 2017, the Chicago Daily Law Bulletin mentioned Marc Richards for moderating a session at the PTAB Bar Association Inaugural Conference in Washington, D.C. Please click here to read more.
in the media
December 01, 2016
In the December 2016 issue of Chicago Lawyer, the incoming fall associate class was mentioned for joining the firm.  Marc Richards was also mentioned for his appointment to the PTAB Bar Association as an interim director.  Please click ...
in the media
October 06, 2016
Chicago Daily Law Bulletin mentioned Marc Richards for his recent appointment as Interim Director of the Patent Trial and Appeal Board Bar Association. Please visit here to read more.
in the media
September 16, 2016
On September 16, Tulsa CW and IPWatchDog mentioned Marc Richards being appointed Interim Director for the new PTAB Bar Association.  Please click here and here to read the articles.
alert
June 29, 2016

A rejection under 35 USC § 102(e) relying upon the disclosure of a provisional application, which anticipates the rejected claim, may not be as iron-clad as one might think...

alert
May 13, 2016

On May 12, 2016, in Enfish, LLC v. Microsoft Corp., et al., the Federal Circuit ruled that a patent claim relating to...

multimedia
December 02, 2015

The Brinks Post-Grant Practice Group held the fourth in a series of webinars on recent developments in ...

alert
June 12, 2015
In a rare occurrence for an inter partes review proceeding, the Patent Trial and Appeal Board (“PTAB” or “Board”) recently granted a motion to amend, finding the patent owner’s substitute claims to be patentable. In REG ...
multimedia
March 19, 2015

The Brinks Post-Grant Practice Group held the second in a series of ...

multimedia
January 28, 2014
Brinks offers its glimpse into three significant developments for 2014: Innovation Act: Pending Patent Litigation Reform Legislation Patentable Subject Matter: Biotech and Software Industries Year-in-Review Top Trademark ...
book
April 2013

Three Brinks attorneys authored chapters in the 2013 edition of the Intellectual Property ...

publication
March 06, 2009
This article first appeared in the 2009 Intellectual Property Owners Association's web site under the 'Articles and Reports', 'Patents Section', Article # 3.
book
2008
Marc V. Richards penned 'Chapter 1: Patenting Inventions,' for the Intellectual Property Law Handbook published by the Illinois Institute of Continuing Legal Education (IICLE), 2008 edition.
publication
Winter 2005
This article has been reprinted with permission from IPLAC Newsletter, Volume 29, No. 1, Winter 2005. The Intellectual Property Law Association of Chicago can be found at http://www.iplac.org/. IDS Changes Under revised 37 CFR 1.98(a)(2), copies ...
Presentations
  • "Recent Developments at the PTAB," Brinks Post-Grant Patent Webinar, December 2, 2015
  • "Brinks Post-Grant Patent Webinar," March 19, 2015
  • "2014 IP Developments: Patentable Subject Matter – Biotech and Software Industries," Brinks Clear Knowledge Now Webinar, January 28, 2014
  • "Red Skies on the Horizon—Tracking Developments of Covered Business Method Proceedings and Preparing for the Era of the Post-Grant Review," ACI’s 3rd Comprehensive Guide to Patent Reform, January 23, 2014
  • "Recent Developments in U.S. Patent Laws:  Novelty and Patent Eligible Subject Matter," Center for Academic Spinoffs Tyrol, University of Innsbruck, October 17, 2013
  •  "Three Years After Bilski – the Patentability of Business Methods,"  Practising Law Institute - Patent Litigation, October 9, 2013
  • “A Review of Guidelines for Patentability and Novelty in Different Patent Offices”  ACI Advanced Summit of Global Patenting Strategy and Practice, New York, July 15-16, 2013
  • "Inventive Step and Non-obviousness: Global Perspectives," First International AMPPI Conference, Mexico City, March 23, 2012
  • "Process Patents and Claim Drafting Tips After Bilski," Chicago Bar Association, June 11, 2010
  • "Patents Update: Annual Intellectual Property Law Institute for Corporate Counsel," Illinois Institute of Continuing Legal Education (IICLE), April 13, 2007 and April 24, 2008
  • "Recent Developments in Patent Law: 1st Annual Intellectual Property Institute," Illinois Institute of Continuing Legal Education (IICLE), December 11-12, 2008
Representative Matters

Patents

  • US 8,889,747 Fischer Tropsch Reactor with Integrated Organic Rankine Cycle
  • US 8,645,420 Methodology Framework and Delivery Vehicle
  • US 8,558,020 Aqueous Hydrogen Peroxide Solution, Process for its Preparation and Use Therefore
  • US 8,266,066 Maintenance, Repair and Overhaul Management
  • US 8,065,210 Total Return to Shareholders Analytics
  • US 7,854,911 Method of Removing Sulfur Dioxide from a Flue Gas Stream
  • US 7,739,590 Automatic Generation of Personal Homepages for a Sales Force
  • US 7,126,558 Industrial Augmented Reality
  • US 7,020,621 Method for Determining Total Cost of Ownership
  • US 6,895,383 Overall Risk in a System
  • US 6,869,686 Irradiated Biaxially-Oriented Film
  • US 6,738,736 Method and Estimator for Providing Capacity Modelling and Planning
  • US 6,740,409 Polymer Films
  • US 6,270,555 Process for Treating Precious Metal Ores
  • US 6,244,707 UV Blocking Lenses and Materials Containing Benzotriazoles and Benzophenones
  • US 6,121,321 Substituted Methoxy Benzylidene Indenyl Acetic and Propionic Acids for Treatment of Patients With Precancerous Lesions
  • US 5,858,694 Method for Identifying Compounds for Inhibition of Cancerous Lesions
  • US 5,834,002 Chewing Gum Containing Colloidal Bismuth Subcitrate
  • US 5,618,504 Method For Recovery of Alkali Values from Trona Using Sequential Crystallization
  • WO 01/05578 Thermoformable Ophthalmic Lenses
  • WO 00/59365 Biomedical Devices with Polyimide Coating
  • WO 99/31506 Parallel Solution Phase Synthesis of Lactams

Litigation

  • Hossack v. Roundhill, Patent Interference 105,877 JC (Patent Board of Appeals & Interferences). Subject: Interference proceeding involving U.S. Patent No. 5,928,151 directed to ultrasound medical diagnostics technology. Resolution: Case settled.
  • Elazar v. Petrushin, Patent Interference 105,737 JL (Patent Board of Appeals & Interferences). Subject: Interference proceeding involving U.S. Patent No. 6,542,602 directed to vocal emotion recognition technology. Resolution: Case settled.
  • Maziuk v. Ritzenthaler, Patent Interference 105,693 McK (Patent Board of Appeals & Interferences).  Subject:  Interference proceeding involving U.S. Patent No. 7,481,987 directed to flue gas desulfurization technology.  Resolution:  Case settled.
  • First Health Group v. Allcare Health Mgmt System Inc., Case No. IL N-1:01cv1790 (Northern District of Illinois).  Subject:  Declaratory judgment action filed by medical insurance provider against patentee seeking declaration of patent invalidity, non-infringement, and unenforceability.  Resolution:  Case settled before trial.
  • Allcare Health Mgmt System, Inc. v. Advance Paradigm, Inc., et al., Case No. 400-CV-1683-E (Northern District of Texas-Fort Worth Division).  Subject:  Patent infringement action asserted against defendants' pharmaceutical benefit computer systems. Resolution:  Case settled before trial.
  • S.C. Johnson Commercial Markets, Inc. v. The B.F. Goodrich Company, Case No.98 C 0052 S (Western District of Wisconsin).  Subject:  Infringement and validity of three patents relating to bulk polymerization process for making acrylic copolymers.  Resolution:  Two patent counts withdrawn before trial.  The remaining count was settled at beginning of trial.
Press Releases & Events
April 26, 2017
On Wednesday, April 26, 2017, Marc Richards will be moderating the panel, The Innovation Process, at World IP Day taking place in the Film Row Cinema at Columbia College Chicago.  Every April 26, The World Intellectual Property ...
March 2, 2017

On March 2, 2017, Marc Richards will serve as moderator of a panel session entitled...

February 09, 2017

CHICAGO—Marc V. Richards, a shareholder and patent attorney at intellectual property law firm Brinks Gilson & ...

September 20, 2016

CHICAGO—Marc V. Richards, a patent attorney and shareholder at intellectual property law firm Brinks Gilson &...

January 12, 2016

CHICAGO—Twenty-two attorneys at intellectual property law firm Brinks Gilson & Lione have been named to the 2016 ...

December 03, 2015

CHICAGO—Marc V. Richards, a patent attorney and shareholder in the Chicago office of intellectual ...

July 07, 2015
ANN ARBOR/DETROIT – Brinks Gilson & Lione, one of the largest intellectual property law firms in the U.S., has been recognized by The Legal 500 as one of the top U.S. firms for prosecution of utility and design patents for the seventh year ...
January 20, 2015
CHICAGO—Twenty-four attorneys at Brinks Gilson & Lione, one of the nation's largest intellectual property law firms, are named to the 2015 Illinois Super Lawyers list by Super Lawyers, a rating service that lists lawyers from more than ...
October 23, 2014
CHICAGO—Gary M. Ropski, a shareholder at intellectual property law firm Brinks Gilson & Lione and the firm's past president, has been named the #1 Leading Intellectual Property Lawyer in Illinois by Leading Lawyers, and fifty-nine ...
May 07, 2014
CHICAGO—Marc V. Richards, a patent attorney and shareholder at the Chicago office of intellectual property law firm Brinks Gilson & Lione, has been named a 2014 Distinguished Legal Writing Award winner by the Burton Awards for his article, ...
April 07, 2014
CHICAGO—In response to the sweeping changes to post-grant proceedings brought about by the Leahy-Smith America Invents Act (AIA), intellectual property law firm Brinks Gilson & Lione has established a post-grant patent practice group with ...
January 23, 2014
On January 23, Marc Richards will be speaking on the panel  “Red Skies on the Horizon-Tracking Developments of Covered Business-Method Proceedings and Preparing for the Era of the Post-Grant Review,”  at ACI’s ...
January 14, 2014
CHICAGO -- Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has announced the 2014 chairpersons of its legal and industry practice groups and geographic task forces. The firm added a new practice group ...
November 26, 2013
.fsfs { font-weight: bold; } CHICAGO—Marc V. Richards, a patent attorney and shareholder at the Chicago office of intellectual property law firm Brinks Gilson & Lione, has been elected to a two-year term to the steering ...
October 9, 2013
On October 9, Marc V. Richards will be presenting "Three Years After Bilski – the Patentability of Business Methods" at the Practising Law Institute in Chicago, IL. 
July 15, 2013
On July 15, Marc V. Richards will be a panelist for “A Review of Guidelines for Patentability and Novelty in Different Patent Offices" at ACI's Advanced Summit on Global Patenting Strategy & Practice  in New York City, NY. ...
April 15, 2013
CHICAGO – With the America Invents Act fresh on the minds of intellectual property attorneys nationwide, the Illinois Institute for Continuing Legal Education (IICLE) has published its 2013 edition of Intellectual Property Law as part of its ...
January 15, 2013
CHICAGO – Brinks Gilson & Lione has added four new attorneys as chairs of its firm-wide practice groups and formed two new task forces to focus on intellectual property legal services to clients in Germany and Brazil. Appointees include ...
September 18, 2012
CHICAGO – Leading Lawyers Network has named 54 attorneys from Brinks Gilson & Lione, one of the largest intellectual property law firms in the United States, as 2012 Leading Lawyers in intellectual property in Illinois for 2012. The roster ...
Honors
  • Burton Awards for Legal Achievement - Law Firm Legal Writing Award, 2014 (Article: "Three Years After Bilski")
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2006, 2007, 2009-2016
  • Illinois Super Lawyers, Intellectual Property, 2013-2016 
  • American Jurisprudence Award, Loyola University Chicago School of Law, Antitrust, Property, Civil Procedure
  • Editor, Loyola University Chicago Law Journal, Loyola University Chicago School of Law
  • Contributing Editor, Loyola University Chicago Consumer Reporter, Loyola University Chicago
Affiliations
  • PTAB Bar Association
    Interim Director, 2016 – present
  • International Association for the Protection of Intellectual Property (AIPPI)
    Treasurer, US Group, 2015 – present
    Int’l Chair of Q217 Working Committee – Hyderabad ExCo, 2011
    US Group Steering Committee, 2013-2015
    US Group Chair Q213, Q217, and Q241
  • Chicago Bar Association  (CBA)
  • American Intellectual Property Law Association (AIPLA)
  • Intellectual Property Law Association of Chicago (IPLAC)
    Treasurer, 2011-2013
    Board of Managers, 2002-2004
  • Intellectual Property Owners Association
  • Licensed Professional Engineer, Illinois, 1989
  • Richard Linn American Inn of Court, Founding Master
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