Skip to main content
Marcus Scott Simon

Marcus Scott Simon

Practice areas:

Patent Application, Patent Infringement, Licensing, Trademark Application

How would you rate this lawyer?

If you’re a current or former client, share your thoughts (anonymously, if you prefer). Would you recommend this lawyer to other clients?

Review Marcus Simon

About Me

I counsel companies regarding their intellectual property needs with a particular focus on patent prosecution, strategy, and counseling.  My clients, which are from all over the United States and various other countries, span a number of different industries including energy, mining, life sciences, health care, defense, aerospace, and university research and development.


 


While I have particular experience with patents related to energy, mining, and medical device technologies, my patent prosecution and counseling practice includes a wide range of technology areas including materials science, chemistry, biotechnology, photonics, and mechanical and electro-mechanical devices.  Some examples of specific technologies include polycrystalline diamond cutting elements and bearings; drill bits and bearing apparatuses used in oil and gas exploration drilling systems; tunnel boring machines for mining; medical devices, such as stents, catheters, bone implants, neuromodulation devices, and cardiovascular devices; chemical separation devices; combustion control systems; and lasers, fiber optics, and other photonic devices.


 


In addition to patent prosecution, my practice includes patent post-grant proceedings at the U.S. Patent and Trademark Office, patent non-infringement and invalidity opinions, intellectual property portfolio management, trademark prosecution, trademark clearance searches and opinions, intellectual property due diligence evaluations, intellectual property licensing and other agreements, and pre-litigation counseling.


 


Before practicing law, I worked at a large aerospace corporation that designs solid-fuel rocket motors as a materials engineer specializing in metallurgy and fracture mechanics.

More 

Practice Areas

Licensed since 2003

  1. Patent Application: 80%
  2. Patent Infringement: 10%
  3. Trademark Application: 5%
  4. Licensing: 5%

Payment

Fees:

Hourly ($300-370/hour), Fixed (Sometimes)

Payment Types:

Cash, Check, Credit Card

Attorney Endorsements

1 total

  • Michael J Frodsham

    Marcus is a personal and thorough attorney with a keen eye for narrow legal and scientific issues.

    More 

    Michael Frodsham Patent Application Attorney
    Relationship: Fellow lawyer in community

Contact Info

Dorsey & Whitney LLP

Kearns Building
136 South Main Street, Suite 1000
Salt Lake City, UT, 84101-1685

Resume

License
StateStatusAcquiredUpdated
WAActive200505/05/2015
UTActive200304/25/2015

Professional Misconduct

We have not found any instances of professional misconduct for this lawyer.
Avvo Contributions
Legal Answers
Awards
Award NameGrantorDate Granted
Utah Legal Elite - Intellectual PropertyUtah Business Magazine2015
Utah Legal Elite - Intellectual PropertyUtah Business Magazine2014
Utah Legal Elite - Intellectual PropertyUtah Business Magazine2013
Utah Legal Elite - Intellectual PropertyUtah Business Magazine2012
Mountain States Rising StarsSuper Lawyers2012
Mountain States Rising StarsSuper Lawyers2011
Mountain States Rising StarsSuper Lawyers2010
Giles Sutherland Rich Moot Court TeamUniversity of Utah S.J. Quinney College of Law2002
President's Graduate FellowshipUniversity of Pennsylvania1997
Lockheed Martin Advanced Development ScholarshipCalifornia Polytechnic State University, San Luis Obispo1996
Academic All-American - Men's TennisCalifornia Polytechnic State University1993

Work Experience
TitleCompany NameDuration
Partner and Patent AttorneyDorsey & Whitney, LLP2013 - Present
Shareholder and Patent AttorneyWorkman | Nydegger2008 - 2013
Patent AttorneySeattle-Area Law Firms (Graybeal Jackson LLP, Dorsey & Whitney LLP)2004 - 2008
Patent Attorney, Patent Agent, and Law ClerkTraskBritt2001 - 2004
Materials EngineerThiokol Propulsion (now Orbital ATK)1998 - 2000

Associations
Association NamePosition NameDuration
Cal Poly SLO Alumni Ambassador for Salt Lake City, UtahAlumni Ambassador2011 - Present
Washington State Bar AssociationAttorney MemberN/A
Utah State BarAttorney MemberN/A
ASM InternationalMemberN/A
American Intellectual Property Law Association (AIPLA)Attorney MemberN/A
International Trademark Association (INTA)Attorney MemberN/A
Salt Lake County Bar AssociationAttorney MemberN/A
International Association for the Protection of Intellectual Property (AIPPI)Attorney MemberN/A

Education
School NameMajorDegreeGraduated
University of Utah S.J. Quinney College of LawLawJD - Juris Doctor2003
University of PennsylvaniaMaterials Science and EngineeringMS - Master of Science in Engineering1998
California Polytechnic State University, San Luis ObispoMaterials EngineeringBS - Bachelor of Science1997

Speaking Engagements
Conference NameTitleDate
Intellectual Property Practice in Israel Committee of AIPLA - Delegation to IsraelFunctional Language in Apparatus Claims in US Patent Practice (not invoking § 112, ¶6): Overview and Practice Suggestions2014
Cleantech Open Organization Workshop, Salt Lake City, UtahPractical Strategies for Managing Patent Rights After the America Invents Act (AIA)2014
Washington StateInequitable Conduct After Therasense2013
Tel-Aviv, IsraelTraversing Obviousness Rejections in Mechanical Patent Applications at the USPTO2013