Biography

Sanjay Agrawal brings nearly three decades of legal experience to Marshall Gerstein's Electrical & Computer Technologies practice as Special Counsel. He oversees patent matters in the US and internationally, particularly within India, China, and Europe. Sanjay draws on his experience protecting the intellectual property of multinational companies. His experience as a counselor, IP strategist, and patent prosecutor has helped companies cut through the myriad of rules in various foreign jurisdictions to protect their innovative technology which is key to their business strategy.

Sanjay enjoys working with inventors and explaining the nuances of patent law. Whether the inventor is a serial inventor, part of a start-up, or a member of a sophisticated enterprise, Sanjay helps inventors determine what aspects of an invention can be patented, determines a patent filing strategy, and what future steps need to be taken to further business goals. For instance, Sanjay develops strategies to avoid infringement on issued patents, conducts competitive analysis to identify “white-space” opportunities to file patents, and works with marketing to identify jurisdictions to protect new products for the business.

Representative Experience

Sanjay is experienced in US patent litigation, licensing, and technology commercialization for industries such as:

  • Software
  • Medical devices
  • Food science
  • Medical imaging (CT, MRI, PET, ultrasound)
  • Radiation therapy
  • Proton therapy
  • Oncology information systems
  • Electronic medical record management
  • Cardiac ablation
  • Internet Architecture
  • Incentive/loyalty systems
  • Credit card systems
  • Electromechanical devices
  • Implantable cardioverter defibrillators
  • MRI systems
  • Electrical meters
  • Open-Source Software
  • Artificial Intelligence (machine learning, neural networks, generative adversarial networks)
  • Precision Medicine

Background and Credentials

Sanjay has more than a decade of in-house counsel experience. Prior to joining Marshall Gerstein, he served as Senior Counsel at Elekta, Inc., a medical equipment manufacturing company based in Sweden. While working for Elekta, Sanjay developed a US domestic and foreign software patent portfolio while instructing outside counsel in multiple jurisdictions. He also managed US patent litigation, trademark matters, and patent licensing agreements. Before Elekta, Sanjay worked for several prominent law firms in the areas of Intellectual Property: patent preparation and prosecution, as well as patent litigation.

Furthermore, Sanjay worked for Nestlé Purina PetCare, where he managed a global patent portfolio while working closely with Nestlé’s US and Switzerland Corporate Strategy and Product Development Groups, providing legal support to regulatory, new product development, marketing, engineering, and research and development

Prior to becoming a patent attorney, Sanjay worked as a software engineer for defense contractors Boeing and McDonnell Douglas. For these companies, he designed software test procedures for the F-18 and F-15 fighter aircraft. Furthermore, he was a project manager for the development, verification, validation, and acceptance testing of the software for the Longbow Apache Fire Control Radar System.

Education

  • St. Louis University School of Law (J.D.)
  • University of Texas, McCombs School of Business (M.S.)
    • Technology Commercialization
  • Washington University in St. Louis (M.S.)
    • Electrical Engineering
  • Washington University in St. Louis (B.S.)
    • Electrical Engineering

Bar Admissions

  • Missouri
  • U.S. Patent and Trademark Office
  • U.S. Circuit Court of Appeals, Federal Circuit

Publications and Presentations

  • "Introduction to Patent Law," Presenter, The Missouri Bar, September 2020. 
  • "Crossing National Boundaries to Access Electronic Data: New Technology, Old Laws," Author, International In-House Counsel Journal, Volume 11, Number 43, Spring 2018, 1. 
  • "A Critical Assessment of the USPTO Policies Toward Small Entity Patent Applications," Co-Author, Journal of Technology and Innovation, Volume 13, Number 3, September 2011. 
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