Biography
For clients in a wide range of industries, Robert M. Gerstein prepares, negotiates and provides opinions on agreements relating to patents, trademarks, copyrights, trade secrets, and the related development and commercialization of intellectual property intensive products and services. Building on over 35 years of experience, he treats each client individually, delving into their business and culture to provide advice that is not only legally advantageous, but is also practical and economical.
Most of Mr. Gerstein’s agreement projects relate to the granting of rights in intellectual property, including licensing or sale of patents, trademarks and copyrights. In some cases, the projects involve the sale of intellectual property along with other business assets in mergers, acquisitions and asset sales.
Having extensive experience in intellectual property litigation, as well as knowledge of important intellectual property agreement issues, he has worked on over 250 agreements resolving patent disputes and dozens of other settlements relating to trademarks, trade secrets and copyrights.
Robert is particularly proud of his non-profit and pro bono activities. He founded and serves as president of the Evan Joseph Gerstein Foundation, named after his son Evan, which raises money for research and care for pediatric cancer. Other non-profit and pro bono activities include:
- Receiving the Award for Excellence in Pro Bono Service from the United States District Court for the Northern District of Illinois and the Chicago Chapter of the Federal Bar Association for his work helping an inmate at Cook Country Jail and Stateville Prison obtain healthcare.
- Being a founding board member and current board member of Facility Theatre, and independent theater company in Chiago.
The business perspective that put him on the firm’s Executive Committee, along with his technical know-how from training as a nuclear engineer, enable him to deliver in-depth advice on a range of issues faced by intellectual property intensive companies. As a result, he has earned acclaim as one of the “World’s Leading Intellectual Property Strategists” by Intellectual Asset Management (IAM) magazine.
Robert has been selected as one of the “World’s Leading Patent Practitioners" since 2012 and as one of the “World’s Leading Intellectual Property Strategists” for several years by Intellectual Asset Management (IAM) magazine. He is listed in the Martindale-Hubbell®2009 Bar Register of Preeminent Lawyers and was also awarded its AV Peer Review Rating™. In 2013, he was recognized as a “Top Rated Lawyer in Intellectual Property” by American Lawyer Media (ALM) and Martindale-Hubbell. He has been selected by the Chicago Law Bulletinas a “Leading Lawyer,” was voted an Illinois Super Lawyer and was selected by his peers for inclusion in The Best Lawyers in America©in the practice area of Patent Law. Since 2014, Robert has been named an “IP Star” in the Managing Intellectual Property IP Stars Survey. In 2022, he was named a Thomson Reuters Stand-out Lawyer.
Representative Experience
- An information technology development company’s largest customer decided it needed a formal agreement to cover the services provided. Most importantly, covering who would own and use the intellectual property related to what was developed. Marshall Gerstein negotiated a Master Services Agreement that kept the client’s biggest customer happy, ensuring that the intellectual property provisions allowed the client to maintain its other relationships and provided a platform for future growth.
- Robert has worked on several agreements for a company that uses biotechnology to engineer fermentation processes to produce pharmaceuticals and their ingredients.
- When a large telecommunications company was sued by another large competitor, Marshall Gerstein helped develop an offensive strategy that went far beyond defending the lawsuit. We advised the client regarding third-party patents that could be asserted against the competitor, drafted and negotiated agreements with the third parties to acquire several patents, and asserted the patents against the competitor. That strategy led to a favorable settlement for the client without the need for time-consuming and expensive trials.
Robert has handled transactions and has given legal opinions for many technologies, including:
- Computers and software
- Pharmaceuticals and biotechnology
- Medical devices
- Vacuum cleaners
- Superconductors
- Video games
- Radio frequency filters
- Horticulture
- E-commerce
- Healthcare IT
Background and Credentials
Robert strives to get a deep understanding of each client’s business and technology, and integrate all aspects of IP with the organization’s business goals. The best solution for one client may not work for another due to their size, corporate cultures, product types and competitive landscape. Applying a concerted and analytical approach, he uncovers as much as possible about the client and the marketplace. That method leads to recommendations that the client can most easily use, while still affording the best legal protection.
In addition to his client counseling and work on transactions and licenses, he is involved in patent, trademark, copyright, unfair competition and contract arbitrations, mediations, and litigation. He has prepared numerous legal opinions for clients, primarily involving contract interpretation, patent validity, patent infringement or patentability. He also conducts due diligence for intellectual property transactions, as well as the intellectual property aspects of mergers, acquisitions and public offerings. Robert has also served as an expert witness on intellectual property transactions.
His experience includes patent and trademark prosecution. The patent prosecution work relates to U.S. foreign and international patent applications and has included reexaminations, inter partes reviews and appeals before the Board of Patent Appeals and Interferences.
He has been with Marshall Gerstein since 1988 and has been a partner since 1995. Robert served on the firm’s Executive Committee for two decades and currently serves as Chair of the firm’s Technology Committee.
In 1988, Robert graduated from The University of Michigan Law School, cum laude, and received his B.S.E., with honors, in nuclear engineering from the College of Engineering at the University of Michigan in 1985.
Education
- University of Michigan Law School (J.D., cum laude)
- University of Michigan (B.S., with honors)
- Nuclear Engineering
Bar Admissions
Publications and Presentations
- "IP Issues in AI, Software Licensing, and IT Services Agreements and Related Due Diligence," Co-Presenter, World IP Forum, May 4, 2021.
- "Fed. Circ.'s UT Immunity Ruling Places Licensing In Spotlight," Law360, August 3, 2020 (featured quotes).
- "Mission Accomplished for Trademark Licensees," Managing Intellectual Property, July 24, 2019.
- "Tempnology Looks for Warm Trademark Ruling From Supreme Court," The Deal, March 7, 2019 (featured quotes).
- "Mission Product Oral Argument Promises Certainty on Long Unresolved Question," IPWatchdog, February 25, 2019 (featured quotes).
Community and Professional Involvement
- American Bar Association (ABA)
- Chicago Bar Association (CBA)
- Illinois State Bar Association (ISBA)
- Intellectual Property Law Association of Chicago (IPLAC)
- American Bar Foundation
- Executives' Club of Chicago