Meet Andrew Berks
Andrew Berks is a patent attorney focused on supporting emerging deep tech companies, by helping 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. He has significant experience in pharmaceuticals, life sciences, and chemical arts, and has 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
Patent Prosecution
Protect
We draft and prosecute patent applications in the US and abroad, and handle all aspects of USPTO practice.
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 provide biotech patent law, chemistry patent law and medical device patent law to a broad array of clients, including established large/midsize corporate clients, small corporate clients, entrepreneurs, startups, universities and other academic institutions.
Biotechnology
We are experts in life sciences, genetic technologies, DNA, and proteins, with many years of experience in the pharmaceutical industry, engaging in product development typically involving an understanding of underlying molecular biology mechanisms. We now represent universities and private enterprise in inventions directed to nucleic acid chemistry, genetics, protein chemistry, cell biology, enzymology, and related topics.
Medical Devices
Consumer Products
Consumer products frequently involve other core areas for us, including chemistry and mechanical devices. We have successfully prosecuted many such patents. Products often range from low-tech to high-tech, and frequently involve other core areas for us, including chemistry and mechanical devices. We have successfully prosecuted many such patents, including cleansers, household mechanical gadgets, and water treatment devices, to name a few.
Pharmaceuticals
Andrew has a Ph.D. in organic chemistry and many years of experience in the pharmaceutical industry in a product development and patent searching role, including small molecules, new uses for old molecules, formulations, and Hatch-Waxman counseling and opinions. This includes experience with both innovator companies and generics. Look to us to understand the technology and the law in this space.
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. Andrew has a Ph.D. in chemistry and speaks your language and understands your technology. You can rely on us for expert advice and patent skill. Some of the areas we have worked in include cleaning chemicals, thermoset adhesives, and plastics, to name a few.
Engineering
We have significant experience in mechanical inventions. Many of our clients come to us with mechanical inventions, ranging from simple household gadgets to complex industrial equipment. With our technical skill, we can quickly and efficiently handle these issues.
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:.
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.
Responsiveness
We are highly responsive, responding to emails and phone calls in promptly. Our standard is to respond to client communications within a few hours.
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.
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.
What People Say
Your work on this has put it in a good position strategically based on the trajectory I saw with the crystallization engineering patent. I hope it makes it across the finish line on this submission. If not, I believe we’re poised to succeed thereafter. Thanks again for your hard and efficient work on this.
~ J. G.
This was a fantastic application you put together. I was so taken aback by all the information, and the clearness of it. Thank you very much again for that.”
~ R. C.
Thank you once again for your guidance and support over the course of the […] program. This has been a great learning experience for us, and you have been one of the single most relevant mentors who has helped us steer through the complex challenges of getting our startup off the ground. I look forward to seeing you at the next event and catch up about our next steps.
~ M. S.
Blog
United Cannabis v. Pure Hemp – Pure CBD Oil Patent Survives Summary Judgement Motion
United Cannabis (UCann) owns US Patent 9,730,911, which discloses methods of extracting cannabinoid oils from cannabis plant material and formulations of the oils. The patent has 36 claims, all on various formulations of cannabinoids. Of particular interest is claim...
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.
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.
Resources
Write, Call or Visit Us
Andrew H. Berks, P.h.D., J.D. • Patent Attorney • Berks IP Law
85 Broad Street, 17th Floor • New York NY 10004