$ 500-750 per hour
Marcus Scott Simon
About Marcus
Biography
I have over 20 years of experience in patent prosecution and counseling. I counsel clients on patent and trademark portfolio development and management, intellectual property litigation, intellectual property licensing, and intellectual property due diligence. My clients span a number of different industries, including medical devices, health care, life sciences, university research and development, energy, mining, and aerospace. A significant part of my practice includes representing clients from outside of the United States before the U.S. Patent and Trademark Office, including clients from Europe, China, Japan, Korea, and Israel.
Clients trust my ability to obtain patents that are enforceable against competitors. U.S. patents in the medical device field that I obtained have been successfully asserted at the district court level to obtain a multimillion-dollar judgement. U.S. patents in the superabrasive materials technology area that I obtained have been enforced at the U.S. International Trade Commission.
I also advise clients on new product development and introduction, including patent infringement and patent validity issues. I have served as opinion counsel for a defendant in a patent infringement case in which the patent at issue was found invalid and not infringed at the district court along with the decision being upheld by the Court of Appeals for the Federal Circuit. I have also performed due diligence investigations for investors and companies considering acquiring large patent portfolios.
While I have specific experience with medical device, materials science, and mechanical technologies, my patent prosecution and counseling experience covers a wide range of technology areas. Some examples of specific technologies I have worked with include invasive and external urinary catheters, ureteral and vascular stents, thrombectomy devices, bone implants, diagnostic devices, cardiovascular devices, and superelastic and shape memory alloys; polycrystalline diamond cutting elements and bearings; physical and process metallurgy; chemical compositions and processes; composite materials; food science and technology; osmosis systems; and lasers, fiber optics, photodetectors, and other photonic devices.
Before practicing law, I gained practical engineering experience as a materials engineer and fracture mechanics specialist at a large aerospace corporation that designed solid-fuel rocket motors.
Practice Areas
Fees and Rates
Cost
Hourly Rates
Payment Methods
- Cash
- Check
- Credit Card
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Chat withLicenses
Licensed in Washington for 20 years
State: Washington
Acquired: 2005
No misconduct found
Licensed in Utah for 22 years
State: Utah
Acquired: 2003
No misconduct found
Location
Ballard Spahr LLP
201 South Main Street, Suite 800, Salt Lake City, UT, 84111
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Marcus Scott Simon's Reviews
Avvo Review Score
Not Yet Reviewed
Marcus Scott Simon's Lawyer Endorsements
"Marcus represents his clients' interests well."
"Marcus is a personal and thorough attorney with a keen eye for narrow legal and scientific issues."
Paul Johnson
Patent application lawyer
Michael Frodsham
Intellectual property lawyer
Experience
Honors
2025
2025 IAM Patent 1000 - World's Leading Patent Professionals, IAM Patent 1000
2025
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers & Partners USA Guide
2025
The Best Lawyers of America - Intellectual Property, The Best Lawyers in America
2024
2024 IAM Patent 1000 - World's Leading Patent Professionals, IAM Patent 1000
2024
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers & Partners USA Guide
2024
The Best Lawyers of America - Intellectual Property, Best Lawyers in America
2023
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers & Partners USA Guide
2023
2023 IAM Patent 1000 - World's Leading Patent Professionals, IAM Patent 1000
2023
The Best Lawyers of America - Intellectual Property, Best Lawyers in America
2022
2022 IAM Patent 1000 - World's Leading Patent Professionals, IAM Patent 1000
2022
The Best Lawyers of America - Intellectual Property, The Best Lawyers of America
2022
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers & Partners USA Guide
2021
The Best Lawyers of America - Intellectual Property, The Best Lawyers in America
2021
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers & Partners USA Guide
2021
2021 IAM Patent 1000 - World's Leading Patent Professionals, IAM Patent 1000
2021
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2021
Intellectual Property - The Best Lawyers in America, The Best Lawyers in America
2020
Intellectual Property - The Best Lawyers in America, The Best Lawyers in America
2020
2020 IAM Patent 1000 - World's Leading Patent Professionals, IAM Patent 1000
2020
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers & Partners USA Guide
2020
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2019
2019 IAM Patent 1000 - World's Leading Patent Professionals, IAM Patent 1000
2019
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers USA
2019
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2018
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers USA
2018
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2017
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers & Partners USA Guide
2017
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2016
Ranked in Chambers & Partners USA Guide - Intellectual Property, Chambers & Partners USA Guide
2016
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2015
Recognized Practitioner in Intellectual Property, Chambers & Partners USA Guide
2015
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2014
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2013
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2012
Mountain States Rising Stars, Super Lawyers
2012
Utah Legal Elite - Intellectual Property, Utah Business Magazine
2011
Mountain States Rising Stars, Super Lawyers
2010
Mountain States Rising Stars, Super Lawyers
2002
Giles Sutherland Rich Moot Court Team, University of Utah S.J. Quinney College of Law
1997
President's Graduate Fellowship, University of Pennsylvania
1996
Lockheed Martin Scholarship for Materials Engineering, California Polytechnic State University, San Luis Obispo
1993
Academic All-American - Men's Tennis, California Polytechnic State University
Work Experience
2025 - Present
Partner and U.S. Patent Attorney, Ballard Spahr LLP
2013 - 2025
Partner and U.S. Patent Attorney, Dorsey & Whitney, LLP
2008 - 2013
Shareholder and U.S. Patent Attorney, Workman Nydegger
2004 - 2008
Associate and U.S. Patent Attorney, Graybeal Jackson LLP, Dorsey & Whitney LLP
2003 - 2003
Judicial Extern, U.S. District Court for the District Of Utah
2001 - 2004
Associate and U.S. Patent Attorney, TraskBritt
1998 - 2000
Materials Engineer, Thiokol Propulsion (now Northrop Grumman Innovation Systems)
Associations
Washington State Bar Association
Attorney Member
Utah State Bar
Attorney Member
ASM International – The Materials Information Society
Member
American Intellectual Property Law Association (AIPLA)
Attorney Member
International Trademark Association (INTA)
Attorney Member
Salt Lake County Bar Association
Attorney Member
International Association for the Protection of Intellectual Property (AIPPI)
Attorney Member
Association of University Technology Managers (AUTM)
Member
Education
2003
University of Utah S.J. Quinney College of Law
JD, Juris Doctor
1998
University of Pennsylvania
MS, Materials Science and Engineering
1997
California Polytechnic State University, San Luis Obispo
BS, Materials Engineering
Speaking Engagements
2015
2015
Seattle, WA
Functional Claiming After Williamson
2015
Dorsey Montana IP Roadshow
Protecting Your Intellectual Property: Practical Strategies for Managing Patent Rights
2014
Intellectual Property Practice in Israel Committee of AIPLA - Delegation to Israel
Functional Language in Apparatus Claims in US Patent Practice (not invoking § 112, ¶6): Overview and Practice Suggestions
2014
Cleantech Open Organization Workshop, Salt Lake City, Utah
Practical Strategies for Managing Patent Rights After the America Invents Act (AIA)
2013
2013
Seattle, WA
Inequitable Conduct After Therasense
Languages
English