Mark A. Borsos
β€œIn patent law it is important to be able to focus on the nuances of an issue while still remaining cognizant of the big picture, and to think creatively when analyzing technical subjects.”

Mark A. BorsosPartner

Chicago
120 South LaSalle Street
Suite 1600
Chicago, IL 60603VCard
312.577.7000 
312.577.7007 fax
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Education

J.D., University of Michigan Law School, 2002
B.S., Biology, University of Michigan, 1999

Services

Technical Areas

Bar & Court Admissions

IllinoisU.S. District Court, Northern District of IllinoisU.S. District Court, Western District of MichiganU.S. Court of Appeals, Federal CircuitU.S. Court of Appeals, Fourth CircuitU.S. Patent and Trademark Office

Recognition

Selected for inclusion in Illinois Super Lawyers – Rising Stars for Intellectual Property Law and Intellectual Property Litigation (2008–17)
Selected as an Emerging Lawyer in Intellectual Property Law, Leading Lawyers Network (2015 and 2016)

Mark A. Borsos has a particularly broad spectrum of intellectual property skills to assist clients ranging from individuals and small businesses to Fortune 500 companies. His practice has a unique focus on U.S. Patent and Trademark Office post-grant patent prosecution, including reissue, reexamination, and inter partes review proceedings. Mark is skilled at employing reissue and post-grant mechanisms to advance licensing and infringement litigation objectives, both offensively and defensively. His experience in strategic patent portfolio creation and management complements his comprehensive patent litigation experience in discovery, summary judgment briefing, pretrial preparation, settlement negotiations, and trial, as a member of both large and small litigation teams.

More generally, Mark has experience in intellectual property dispute resolution, patent prosecution, trademark prosecution, and freedom-to-operate analysis in various technical fields. Many of his clients are involved in areas such as medical devices and therapies (orthopedic implants, implantable materials and coatings, allografts, cardiac stimulation devices, and wound-healing compositions), as well as in gene therapy applications. Mark has worked with technology applications that include the following, among others:

  • Medical devices and therapies
  • Biotechnology and gene therapy
  • Construction and building products
  • Chemistry and polymer technology
  • Food processing and packaging
  • Irradiation chambers
  • Lighting technology
  • Athletic garments and padding
  • Automobile transmissions


For all clients and applications, Mark uses his prosecution and trial insight to help clients develop strong patent and trademark rights that minimize the potential risk of litigation.



Represents a midsized medical device company in patent prosecution matters, product clearance for new devices, licensing, and miscellaneous intellectual property issues.

Counsels a large supplier to the construction industry with respect to product clearance issues.

Counsels a small pharmaceutical manufacturer with respect to patent prosecution and litigation.

Prosecutes a variety of U.S. patent applications originating outside of the United States.

Prosecutes reissue applications to broaden the scope of patent protection and make other corrections to patents for various clients.

Represented a midsized medical device company in patent infringement litigation and licensing discussions relating to interspinous implants.

Represented a small technology company in litigation for trade secret misappropriation and breach of contract.

Represented a Fortune 500 company in a lawsuit regarding patent infringement and license issues relating to reissue patents for cardiac stimulation devices.

Represented a midsized medical device company in patent infringement litigation relating to orthopedic screws.

Represented a large food processing company in patent infringement litigation relating to a family of patents for processing and packaging of liquid egg products.

Presentations

  • "101 Post-Alice: How the USPTO and Practitioners Are Reacting," Intellectual Property Law Association of Chicago/U.S. Patent and Trademark Office program at Techweek Chicago, IIT Chicago-Kent College of Law, June 26, 2015.
  • "Strategies for the Use of Expert Evidence in Post-Issuance Proceedings," Fitch, Even, Tabin & Flannery Webinar, May 27, 2015.
  • "Understanding the Limits of Your Patent: An Overview of Claim Construction for Prosecution and Litigation," Fitch, Even, Tabin & Flannery Webinar, June 27, 2013.
  • Chicago Bar Association
  • Intellectual Property Law Association of Chicago

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