Mike McGurk – Intellectual Property Attorney

Mike McGurk (IP ATTORNEY – FOUNDING MEMBER)

MISSION STATEMENT

“I founded McGurk Group LLC to provide clients with the highest quality advice and work product at competitive prices, and to provide a healthy and supportive atmosphere for IP professionals to work and grow their practices. My work and leadership in two law firms and two non-profit organizations (Boston Bar Association & Boston Patent Law Association) helped me develop the skills needed to launch McGurk Group. Please consider working with us as we continue to build our team.”
Mike

 

CREDENTIALS

Mike McGurk has more than 30 years of experience in virtually all aspects of patent law. Working with clients ranging from small start-ups to large Fortune 100 companies, he provides counsel in due diligence matters, global portfolio development and adversarial proceedings, including litigation, post-grant reviews, interferences and re-examinations. Mike works primarily with pharmaceutical, chemical, medical device and mechanical technology businesses. For at least the last fifteen (15) years, approximately 50-70% of Mike’s work has been focused in life sciences, including ANDA litigation support and pre-filing due diligence. Mike’s practice is informed by his background as a patent examiner in the chemical arts for the United States Patent and Trademark Office (USPTO), as a litigator for ten years, and as an expert in due diligence matters. He regularly provides strategic litigation counseling support to clients across the nation, and has handled numerous patent matters before the Patent Trial and Appeal Board of the USPTO. His extensive due diligence experience includes pre-litigation, acquisition, in-license, freedom-to-operate product and/or process clearance, design around, validity and patentability matters. Mike works with teams having the appropriate technical and legal abilities.

EDUCATION

• Licensing Executive Society, Certified License Professional (CLP), 2015
• Harvard Certificate Program on Negotiations, 2008
• Adjunct Professor, Litigation & Mediation, George Mason Univ. Law School, 1998-2000
• George Washington University National Law Center, 1984-1988 (evening program)
• Juris Doctor, w/ concentration in intellectual property
• University of Delaware, 1979-1983, Bachelor of Chemical Engineering
• Dean’s List, Accepted into Combined MBA program

LEADERSHIP

• Managing Partner Finnegan, 2011-2015
• Head of DLA Piper Boston IPT Group 2015-2018
• Boston Bar Association, Chair IP Section 2015-2017
• Boston Patent Law Association, Board Member 2015-2017

ACHIEVEMENTS

• Recognized leader in intellectual property law by Chambers USA, 2013-2018.
• Recognized leader in intellectual property law by The Legal Fortune 500, U.S., 2016-2018 (Tier 1, 2018)
• Successfully argued in Toxgon v. Duratek litigation in E.D. Washington that Toxgon’s $690 million dollar patent infringement claim against Duratek should be dismissed with prejudice on summary judgment.

SKILLS

• Successfully managed office of 60+ people (lawyers, staff, and admin)
• Technology focus in life sciences, chemistry, renewable energy, materials science
• Over 30 years of patent business experience and expertise in all facets of patent law
• Ten (10) plus years of litigation experience, including first and second chair litigation
• Strategic use of IP to achieve business goals
• Due diligence, portfolio development and monetization expertise
• Interference, reexamination, PTAB post grant experience
• Project management, budgeting, team building
• Litigation avoidance and negotiations
• Building strategic partnerships, client interaction
• Business development strategies and execution
• Community outreach, philanthropy, focus on health and well-being

EXPERIENCE

• DLA Piper LLP (U.S)
  • DLA – Partner , 2015 – June 2018
  • Hired to build and expand Boston’s IPT practice
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• Finnegan Henderson Farabow Garrett & Dunner, Washington D.C.
  • Patent Agent, 1987; Associate 1988-1998; Partner, 1998-2015
  • Boston Office 2002-2015
  • Managing Partner, 2011-2015
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• Neuman, Williams, Anderson & Olsen, Chicago, IL
  • Law Clerk, Summer 1987
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• Parkhurst & Oliff, Alexandria, VA
  • Patent Agent, May 1985 – May 1987
  • Prepared and prosecuted patent applications, drafted opinions, and met with clients
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• U.S. Patent & Trademark Office, Washington, D.C.
  • Chemical Patent Examiner, August 1983 – May 1985
  • Examining patent applications in chemical arts

REPRESENTATIVE PUBLICATIONS

• Coauthor, “Ex Parte Reexamination as a Valuable Option for Challenging Patent Claims,” Boston Patent Law Association, October 2016.
• Coauthor, “The Intersection of Patents and Trade Secrets,” 7 Hastings Law & Technology Journal 189, Summer 2015.
• Coauthor, “Building a Strong Robotics IP Portfolio,” Managing Intellectual Property, Chinese Edition, Dec. 2014.
• Coauthor, “IP Due Diligence,” The Corporate Counselor, July 2014.
• Coauthor, “Patents or Trade Secrets: The Choice Is Yours,” Robotics Business Review, May 1, 2014.
• Coauthor, “Presenting Due Diligence Results without Revealing Confidential Information—Is It Possible?,” China IP News, Apr. 9, 2014.
• Coauthor, “IDS Practice After Therasense and the AIA: Decoupling the Link Between Information Disclosure and Inequitable Conduct,” Santa Clara Computer & High Technology Law Journal, May 23, 2013.