Jeffery M. Duncan

Jeffery M. Duncan is a shareholder and former chair of the Biotechnology and Pharmaceutical Group at Brinks Hofer Gilson & Lione. Mr. Duncan joined the firm in 1984 upon graduating from The J. Reuben Clark Law School at Brigham Young University, and he has been a shareholder since 1990.

Mr. Duncan's practice includes counseling and preparing opinions in patent, trade secret and licensing matters; evaluating, negotiating and drafting technology transfer and joint venture agreements; performing intellectual property evaluations, audits and due diligence reviews; litigating patent and trade secrets cases; and preparing and prosecuting patent applications in the U.S. and abroad. His practice has concentrated on the following technologies: pharmaceuticals, biotechnology, diagnostics and chemistry.

• Illinois Super Lawyer, Intellectual Property Law, 2006, 2007, 2009
• Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007-2009

• Colorado State Univ. Research Found. v. CryoLife, Inc. Mr. Duncan co-led a team that defended CryoLife in a breach of license dispute involving tissue engineering technology. An aggressive discovery and summary judgment strategy led to an early settlement favorable to CryoLife.
• Strahilevitz v. Kaneka Pharmaceutical. Mr. Duncan was a member of a four-lawyer team defending Kaneka in a patent infringement suit involving treatments for hyperlipidemia. Summary judgment led to a settlement favorable to Kaneka.
• Shaw Industries, Inc. v. William C. Mallonee. Mr. Duncan led a three-lawyer team in a trade secret suit against a former employee in the state court in Georgia. A hearing for a Temporary Restraining Order was held two days after suit was filed. The T.R.O. was granted and later converted to a Preliminary Injunction. Expedited discovery showed that data from our client's research effort had, in fact, been disclosed to competitors. Later discovery showed violations of the Preliminary Injunction. After an evidentiary hearing, defendant was held in contempt. Soon thereafter, the case was settled on terms favorable to Shaw.
• Herman Miller Inc. v. Teknion, Inc. Mr. Duncan was a member of a five-lawyer team that brought a patent infringement suit on behalf of Herman Miller. After aggressive discovery and successful summary judgment motions, the suit was settled in favor of Herman Miller.
• Interface, Inc. v. Shaw Industries, Inc. Mr. Duncan was a member of a seven-lawyer team defending Shaw in a suit charging infringement of two unrelated patents and trade secret misappropriation. After intense discovery in the U.S. and Europe, and after successful pre-trial motions, the suit was settled on terms favorable to Shaw.

• U.S. Patent No. 6,444,684 to Behforouz, et al., Lavendamycin analogs, quinoline-5, 8-diones and methods of using them
• U.S. Patent No. 5,656,467 and 5,869,295 to LaBean, et al., Methods and Materials for Producing Gene Libraries
• U.S. Patent No. 5,637,739 to Jacobsen, et al., Chiral Catalysts and Catalytic Epoxidation Catalyzed Thereby
• U.S. Patent No. 4,919,491 to Zibell Chewing Gum Containing Delayed Release Protein Sweetener and Method

• Due diligence reviews prior to entering licensing, joint venture or financing agreements. These reviews typically involve a thorough audit of the intellectual property assets of the potential partner/licensor and a search and freedom to operate opinion regarding the patents of third parties.
• Pre-marketing patent audits of a client’s patent portfolio and freedom to operate opinions.
• Single and multiple patent infringement and validity studies.

• Negotiating and drafting new agreements to create joint ventures or to license or acquire intellectual property assets.
• Interpretation of existing agreements.

• "A Comparison Between the Judicial and Administrative Routes to Enforce Intellectual Property Rights in China," Co-author, The John Marshall Review of Intellectual Property Law, Vol. 7, Issue 3, June, 2008
• "Dissecting Views of Judges on Written Description: Federal Circuit Includes 'Separatists,' 'Fusionists' and 'Clarificationists'," The National Law Journal, Vol. 26, No. 87, June 13, 2005
• "Practitioners Be Wary: The Dangers of Functional Descriptions in Biotech Inventions," 15 No. 10, Andrews Entertainment Industry Litigation Reporter, No. 21, August 19, 2003
• "IP Docketing Software Can Be Exciting, Really!" Co-author, Legal Tech Newsletter, June 2003
• "The Court is Listening–Recent Federal Circuit Decisions Recognize Challenges of Biotech Innovation," Legal Times, Vol. XXV, No. 43, November 4, 2002

• “Branded vs. Generic Pharma in the USA,” LexisNexis’ Pharma & Biotech Patent Lifecycle Management Conference, Shanghai, China, December 3-4, 2009
• "USITC Section 337 Investigations and Responses: Preventative Medicine–Avoiding § 337 and other U.S. IP Litigation," Beijing and Shenzhen, China, April 2009
• "What Every Chinese Company Should Know about U.S. Patent Law and Practice," Guangdong Patent Law Association Conference, Guangzhou, China, July 7, 2007
• "KSR–How Did it Change the U.S. Standard for Obviousness?" SIPO Examiner Training Center, Chinese Patent Office, Beijing, China, July 6, 2007
• "Licenses, Joint Ventures and Other Agreements to Commercialize your Technology," Brinks Hofer Gilson & Lione Client Seminar, Chicago, Illinois, November 1, 2005

• Licensing Executives Society
  Past Chairman, Chicago Chapter
• American Intellectual Property Law Association
  Biotechnology and Chemical Practice Committees
• Intellectual Property Law Association of Chicago 
  Past Chair, Biotechnology Subcommittee
• American Bar Association
  Patent, Trademark & Copyright Section
• The J. Reuben Clark Law Society
  Past President, Chicago Chapter

• Super Lawyers, Corporate Counsel Edition
• US Federal News
• Crain's Chicago Business, PinhawkChicagoLawFirmNewzDigest.com