Kimberly L. Berkowski, Ph.D. prosecutes patent applications in the chemical, pharmaceutical, and polymer/material sciences for various types of clients, including international corporations, start-ups, and universities. Her technical research and teaching background enable her to work seamlessly with scientists and lay persons alike to produce quality work and favorable results. She has extensive bench experience with the synthesis, characterization, and application of small molecules, polymers, peptides, and biomaterials. Kimberly also brings exceptional technical communication skills that she cultivated during her years of teaching in academia.
Kimberly was selected as an “Emerging Lawyer” in the 2015–2020 editions of Emerging Lawyers Magazine, in which young attorneys are recognized among the top up-and-coming attorneys in Illinois. Additionally, she was selected for inclusion in the 2016–2020 Illinois Rising Stars® list, featuring outstanding young attorneys in the state.
Background and Credentials
Prior to becoming a partner, Kimberly was an an associate and patent agent at Marshall Gerstein. As a patent agent, she prosecuted patents and provided opinions for clients of the firm's chemistry and biotechnology practice groups.
Kimberly has been an adjunct professor at Northwestern Law School. Prior to joining the firm, she was an Assistant Professor of Organic Chemistry at Washington College in Chestertown, Maryland where her research involved the mechanical initiation of organic chemistry reactions through ultrasound.
Prior to Washington College, she spent three years teaching at the Massachusetts Institute of Technology in Cambridge as the Instructor of Organic Chemistry. There she not only taught Organic Chemistry classes, but was also actively involved in the development and implementation of undergraduate laboratory experiments. She received the Everett Moore Baker Memorial Award for Excellence in Undergraduate Teaching (2006).
Kimberly earned her Ph.D. in chemistry from the University of Illinois at Urbana-Champaign in 2004 under Professor Jeffrey S. Moore. Her doctoral research included developing a method for harnessing energy to a single site on a polymer by using ultrasound, and synthesizing bio-responsive hydrogels within microfluidic channels using photolithography.
She received her B.S., summa cum laude, in chemistry and also in biochemistry from the University of Detroit Mercy in 1999 where she was the valedictorian of her class. After completing this degree, Kimberly interned at BASF Aktiengesellschaft in Germany, participating in research related to the development of an iron catalyst for ethylene polymerization.
Community and Professional Involvement
- Girls 4 Science (Advisory Board Member)
- American Chemical Society
- Intellectual Property Law Association of Chicago (IPLAC)
- Chicago Bar Association (CBA)
- Northwestern University School of Law (J.D., cum laude)
- University of Illinois, Urbana-Champaign (Ph.D.)
- University of Detroit Mercy (B.S., summa cum laude)
- Chemistry and Biochemistry. valedictorian
- U.S. Patent and Trademark Office
Publications and Presentations
- “Examination of the Obviousness Requirement for Patenting Chemical Compounds,” American Chemical Society National Meeting, March 25, 2015.
- “Patent Law Sizzles Amid IP Boom,” Crain’s Chicago Business, October 3, 2011 (featured quotes).
- Berkowski, K. L., Potisek, S. L., Hickenboth, C. R., Moore, J. S. “Ultrasound-Induced Site-Specific Cleavage of Azo-Functionalized Poly(ethylene glycol)” Macromolecules (2005), 38, 8975–8978.
- Plunkett, K. N., Berkowski, K. L., Moore, J. S. “Chymotrypsin Responsive Hydrogel: Application of a Disulfide Exchange Protocol for the Preparation of Methacrylamide Containing Peptides” Biomacromolecules (2005), 6, 632–637.
- Berkowski, K. L., Plunkett, K. N., Yu, Q., Moore, J. S. “Introduction to Photolithography – Preparation of Microscale Polymer Silhouettes” J. Chem. Ed. (2005), 85, 1365–1369.
- Prepared and prosecuted to issuance patent applications relating to small-molecule therapeutics, personal care products, pharmaceutical formulations, and synthetic methods.
- Prepared patentability, validity, and freedom-to-operate opinions for chemical compounds, polymeric materials, and chemical/biological processes.
Kimberly’s prosecution experience spans a wide variety of technologies, such as:
- Small peptides and chemically modified derivatives
- Pharmaceuticals, pharmaceutical formulations, and methods of use
- Drug delivery systems
- Crystal polymorphs
- Synthetic methods
- Polymer design, preparation, and methods of use
- Compounds, polymers, and formulations for personal care products