Andrew Berks
Primary Practice Areas
Andrew Berks is a partner in the firm's Intellectual Property Law practice, where he focuses on patent law, intellectual property transactions, and patent prosecution. In addition to his Ph.D. in chemistry, Andrew has significant work experience in the pharmaceutical and biotechnology sectors. He counsels clients in securing and defending their intellectual property in the areas of chemistry, biotechnology, pharmaceuticals, medical devices, engineering, electronics, and software.
Andrew focuses on designing cost-effective I.P. strategies, including U.S. and foreign patent filings. He oversees client patent applications through issuance to become solid assets, protecting client markets and businesses. He frequently serves as outside I.P. counsel and has significant in-house experience.
Experienced in all aspects of U.S. and foreign patent office procedures, Andrew regularly works with examiners, filing patent appeals, and executing post-grant procedures, including inter-partes reviews. He enforces and defends patent rights at the USPTO and in federal courts.
Additionally, Andrew negotiates and drafts license agreements and other IP-related transaction agreements. He also investigates technology for patent opinions, including freedom-to-operate, patentability, and invalidity opinions, as well as Hatch-Waxman "paragraph IV" notice letters and generic drug strategies.
Education
- Ph.D. Chemistry, University of Colorado 1988
- JD, Fordham Law, 2007 Honors: Associate Editor, Fordham Intellectual Property, Media, and Entertainment Law Journal, Author of published student note.
Admissions
- New York
- New Jersey
- USPTO
- Southern District of New York, Eastern District of New York, and District of New Jersey
