Andrew Berks is a patent attorney specializing in helping his clients obtain, enforce, and license their patents. Andrew also works in the Hatch-Waxman (generic drug) area. Andrew is particularly adept in the subject areas of life sciences, pharmaceuticals, chemistry, computer inventions, and engineering inventions.
Andrew worked for 17 years in scientific and legal capacities at major pharmaceutical companies (innovator and generic) before attending to law school. Prior to law school, Andrew was an internal science adviser, chemistry and patent searcher, and patent agent. He worked closely with clients addressing their technical needs to give them the best possible results. His natural insight into client relationships, and ability to read between the lines to get clients what they really need, has become a theme throughout his work.
This skill is what sets Andrew apart from his competition. Andrew takes the time to understand the business and technical needs of his clients, and being proactive in advising clients.
For in-house lawyers and larger corporate clients, this means:
- Delivering high quality work on time and on budget
- Tailoring legal solutions to the needs of the client
- A combination of technical and legal expertise to address complex subject matter
- Keeping the company out of court with superior insight into transactional issues and contract negotiations
- Peace of mind knowing the work will be handled well by a highly competent and responsive team
- Making clients look good to management and investors
For startups, entrepreneurs, and individuals, this means:
- Getting products to market faster — earning income sooner
- Beating the competition with superior IP — increasing market share
- Protecting your ideas, products, and brands from competitors
- Drafting license agreements and contracts that protect intellectual property
For all our clients, our job is taking care of the legal issues allowing them to focus on building their businesses and achieve their goals.
We are highly responsive to our clients’s needs — our clients are not an account number. We take the time to fully understand the issues to get our clients the best possible outcome.
Services that Andrew provides:
- Patent prosecution
- Patent litigation
- Expertise in Hatch-Waxman (generic drug) law, including â€œparagraph IVâ€ notice letters and Orange Book patent strategies
- Patent opinions
- IP strategies
- IP licenses
Other things to know about me:
- Graduate of Fordham Law School
- Member of the Fordham Intellectual Property, Media and Entertainment Law Journal
- Admitted in New York, New Jersey and USPTO
- Ph.D. in Chemistry, University of Colorado Boulder
- Representative publications/Presentations:
- Secret Prior Art – Time for Another Look. NYIPLA Report, April-May 2017, https://stage.nyipla.org/images/nyipla/Documents/Report/AprilMay2017Berks.pdf
- Preparations of Two Pivotal Intermediates for the Synthesis of beta-Methyl-Carbapenem Antibiotics (Tetrahedron Report No. 387). Tetrahedron, 1996, 52, 331-375. DOI: 10.1016/0040-4020(95)00842-X
- Markush Structures in Patents, in The Encyclopedia of Computational Chemistry; Schleyer, P. v. R.; Allinger, N. L., Clark, T.; Gasteiger, J.; Kollman, P. A.; Schaefer III, H. F.; Schreiner, P. R., Eds.; John Wiley & Sons: Chichester, 1998, vol 3, pp. 1552-1559.
- Antitrust Aspects of the “Access to Affordable Pharmaceuticals” Act: Incentives for Generics Out the Window? 16 Fordham Intell. Prop. Media & Ent. L.J., 1305 (2006) (Student Note)
- Federal Circuit Case Law Review: Recent Developments in § 101 Patentable Subject Matter. Spring 2012 American Chemical Society Meeting, March 25-26, 2012.
- Recent Federal Circuit Case Law Review. Patent Subject Matter Eligilibilty In View Of Mayo v. Prometheus and Assn. Mol. Path. v. Myriad. Fall 2015 American Chemical Society Meeting, August 16-20, 2015 (Boston, MA).
- Allocation of Intellectual Property Rights in Research Agreements, NYIPLA One-day CLE, Jan. 17, 2013
- Over ten years’ experience in the generic drug industry
- Regular speaker at the American Chemical Society biannual meetings
- Active member of New York Intellectual Property Law Assoc.
- Member of American Bar Association
- Member of New York State Bar Association
- Experienced in a wide variety of technology areas.
Some representative cases:
- U.S. Patent No. 7,709,232
- U.S. Patent No. 8,093,032
- U.S. Patent No. 7,897,179
- U.S. Patent No. 8,545,882
- U.S. Patent No. 7,526,074
- U.S. Patent No. 7,572,362
- U.S. Patent Publication No. US2012/0260886