Mark FitzGerald concentrates his practice on intellectual property and patent law, representing industry and academic/nonprofit institution clients from the U.S. and abroad for the strategic development of patent portfolios, analyses of freedom to operate, patent validity and infringement and associated opinion preparation, transactional due diligence and associated client counseling.
A major focus of my work relates to the biotechnology patent arena, working with clients to secure meaningful patent protection for their own technology as well as assisting them in charting a course through the patent protection shoals of their competitors.
Representative areas of technical experience include:
In addition to strategic patent portfolio development, I also work with clients to evaluate the patent landscape regarding their technology, and the strengths and weaknesses of their competitors’ patent positions, consulting on design-around options as well as providing reasoned opinions regarding patent invalidity and non-infringement where necessary.
I’m focusing on the ways that patent strategy relating to biomolecules will shift to a more application-oriented approach that will be shaped by the ongoing tension between the Federal Circuit and the Supreme Court regarding patent-eligible subject matter.
The AmLaw Litigation Daily | May 07, 2021
This article recognizes the full NP team that secured a major damages win on behalf of Takeda subsidiary Millennium Pharmaceuticals. Litigation Department vice chair and partner Ethan Trull and partner John Ruskusky, both of the Complex Commercial Disputes group in Chicago, led the damages trial team. The NP team also included partner Lisa Sullivan, associate Katie Burnett, e-discovery specialist Anders van Marter, and paralegal Donna Long, all of the Complex Commercial Disputes group in Chicago. In addition, Intellectual Property partner Mark FitzGerald and Complex Commercial Disputes associate Tarae Howell, both of the Boston office, played integral roles in the initial fraud win for Millennium in 2020.
STAT Reports | April 26, 2021
This long-form report examining the science behind the nascent microbiome industry quotes Boston Intellectual Property partner Mark FitzGerald on patents in this area as the field begins to mature.
Law360 | April 23, 2021
This article, covering the Delaware Chancery Court’ s $38.2 million damages judgment in favor of Takeda subsidiary Millennium Pharmaceuticals for its fraud claim against Harpoon Therapeutics, mentions Chicago Complex Commercial Disputes partners Ethan Trull, John Ruskusky and Lisa Sullivan; associate Katie Burnett; senior e-discovery specialist Anders van Marter; and paralegal Donna Long for representing Millennium. Intellectual Property partner Mark FitzGerald, Complex Commercial Disputes associate Tarae Howell, and Intellectual Property patent specialist Angela Hafner, all in Boston, have also played integral roles in the matter.
Nature Biotechnology | July 08, 2020
Boston Intellectual Property partner Mark FitzGerald co-authored this journal article on microbiome therapeutics, and how two U.S. Supreme Court decisions have redefined the scope of which natural phenomena—including microbiome therapeutics—are patent eligible.
Intellectual Property & Technology Law Journal | May 01, 2020
Intellectual Property partner Mark FitzGerald in Boston and associate Matt Kitces in Washington, D.C. contributed this article examining the post-grant review challenge of a U.S. patent related microbiomes and the treatment of cancer. The result could provide an indication of how microbiome-related patents will fare when challenged for validity. Click here for the full article.
Microbiome Times | April 29, 2020
Boston Intellectual Property partners Mark FitzGerald and David Resnick co-authored this article analyzing a recent decision by the U.S. Patent Trial and Appeal Board to invalidate a University of Chicago U.S. microbiome patent. The authors note some positive aspects of that decision within the microbiome community, as it provides increased definition around what they can protect with patents.
IAM | April 02, 2020
Boston Intellectual Property partner Mark FitzGerald discusses how the microbiome—the collection of microbes that occupy the human body—has become an increasingly fruitful source of insights for life sciences researchers looking to develop new therapeutics.
Patent Alert | 03.03.21
Webinar Recording | 04.22.20
Patent Law Alert | 02.18.20
Patent Law Alert | 02.12.20
Patent Law Alert | 05.09.19
Food, Beverage & Agribusiness Alert | 01.02.19
Patent Law Alert | 11.01.18
Suffolk University Law School, J.D., cum laude
Brown University, Ph.D.
Worcester Polytechnic Institute, B.S., with high distinction
U.S. Patent and Trademark Office
Mark is a member of the Massachusetts Bar Association, the American Bar Association, and the American Intellectual Property Law Association.