About Us

Our practice is all about advancing innovation, helping  you get the best possible intellectual property protection for your new inventions, processes or products. Our specialty is cost-effective patent counsel that stands up to challenges.

We have significant experience counseling clients, developing patent strategies, and evaluating legal issues in biotechnology, pharmaceuticals, medical devices, engineering,  chemical arts and consumer products . Our services include patent prosecution, patent litigation, drafting and negotiating and drafting licenses and research agreements, patent opinion work, bio-similars, patent appeals (PTAB practice), and Hatch-Waxman practice (generic drug paragraph IV strategies and notice letters).

Meet Andrew Berks

Andrew Berks is the principal of Berks IP Law. We help our clients obtain and enforce patent rights. Understanding client needs and business objectives is a critical factor that sets us apart from other patent attorneys.

Andrew’s technical background is in chemistry. I have significant experience in pharmaceuticals, life sciences, and chemical arts, but we have successfully prosecuted matters in all patent subject areas.  

Andrew is licensed in New York, New Jersey, the United States Patent and Trademark Office, the United States Federal Courts and the courts in New York and New Jersey. Andrew holds a Ph.D. in Chemistry from the University of Colorado (1988) and a J.D. from Fordham Law School (2007).

Services

Patent Strategy & Counseling

Plan

What patent protection is best for my business? Develop a plan for US and International patent protection.
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Patent Prosecution

Protect

We draft and prosecute patent application in the US and other countries. We handle all aspects of USPTO practice.
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Opinions & Enforcement

Monetize

We negotiate and draft IP license agreements. We prepare opinions, including freedom-to-operate, infringement, and validity opinions. Patent enforcement actions.

Industries

We work with a broad array of clients, including established large/midsize corporate clients, small corporate clients, entrepreneurs and startups, and universities and other academic institutions.

Biotechnology

We are experts in life sciences, genetic technologies, DNA, and proteins.

Pharmaceuticals

We have years of experience in the pharmaceutical industry, including small molecules, new uses for old molecules, formulations, and Hatch-Waxman counseling and opinions.

Medical Devices

We have significant experience in medical devices, including inhalation technologies, visualization technologies, and orthopedics.

Chemistry

Andrew has a Ph.D. in chemistry. It’s a core expertise. We have handled cases in basic chemical technologies, polymers, adhesives, and consumer products.

Consumer Products

Consumer products frequently involve other core areas for us, including chemistry and mechanical devices. We have successfully prosecuted many such patents.

Engineering

We have significant experience in mechanical inventions.

Why Choose Us?

Clients choose to work with us because of our competence, responsiveness, and client orientation.

Working with us gives clients the security of knowing that a team of highly competent attorneys is working on their matter that have done this hundreds of times before. We are highly responsive, responding to emails and phone calls promptly (we strive for a four hour (max) response time during business hours). We also are careful to understand client goals and needs. This can include budget needs and strategic needs. With our spectrum of technical and interpersonal skills, our clients are assured of the highest quality service and outcome. Our attributes in our everyday work include:.

 

Competence

Working with us gives clients the security of knowing that a team of highly competent attorneys is working on their matter that have done this hundreds of times before.

Analytics

We employ a number of advanced tools, including premium search engines and data sources that track patent examiner and litigation performance. This allows us to better track behavior of patent examiners and courts and formulate winning arguments.

Client Orientation

We understand client goals and needs. This includes budget needs and strategic needs. With our spectrum of technical and interpersonal skills, our clients are assured of the highest quality service and outcome.

Responsiveness

We are highly responsive, responding to emails and phone calls in promptly, always within a few hours.

Security

We use the latest technology including secure cloud services and features such as multi-factor authentication whenever possible. Our data files are stored in state-of-the-art online repositories and backed up offline on redundant storage devices.

Practice Management

We use modern efficiency tools such as web-based time-keeping apps, project management, docketing, and financial reporting apps. Our clients communicate with us by email, voice call, text messaging, Skype, WhatsApp, and similar services.

Blog

Why We Use the Problem-Solution Approach to Patent Prosecution

A problem-solution approach to patent drafting and prosecution very clearly lays out the problem being solved by the invention. Arguments that the invention is better, more efficient, less expensive, faster, and easier to use than the prior art are important, but all follow from a clear statement of the problem being solved. Our analysis of of recent allowances in biotech arts suggests that this problem-solution approach is more likely to result in a patent allowance.

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What You Need to Know About The Written Description Requirement

The written description requirement mandates that all elements in the claims need to be described and discussed the specification. Not doing this is a common mistake by DIY inventors. Failure to do this will be picked up very quickly by examiners, and can lead to invalidation down the road. Look to us to get this key aspect of patent prosecution right the first time.

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Write, Call or Visit Us

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Berks IP Law • 85 Broad St, 17th Floor • New York NY 10004 • +1-646-797-2952