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Jeffery M. Duncan

Practice Summary

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.

Honors/Distinctions
  • Illinois Super Lawyer, Intellectual Property Law, 2006, 2007, 2009, 2010 
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007-2011
Representative Matters
Litigation
  • 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.
Patents
  • 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
Patent Reviews
  • 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.
Intellectual Property Agreements
  • Negotiating and drafting new agreements to create joint ventures or to license or acquire intellectual property assets.
  • Interpretation of existing agreements.
Publications
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Presentations
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  • "Hong Kong as a Technology Marketplace," Hong Kong: Your Partner For Success in China, Chicago, Illinois, May 25, 2011
  • "What Every Biotech/Pharma Executive Should Know about Intellectual Property," 2nd Annual Biotech-Pharma Symposium of ACSE and Yaoyuan, Schaumburg, Illinois, May 8, 2011
  • “IP Issues for Biotech: ‘Gene Patents’ and ‘Biosimilars’” and “IP Issues for Branded and Generic Pharma Companies,” Seminar for the Guangdong FDA, Guangzhou, China, April 2010
  • “IP Clearance: What, Why, How and When,” IP Strategies for Global Companies Seminar, Zhuhai, China, April 2010
  • “Winning IP Disputes in the United States,” IP Strategies for Global Companies Seminar for the Zhejiang Bar Association, Hangzhou, China, April 7, 2010
  • “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
  • "IP Due Diligence: When and How," IAM Update, Menlo Park, California, September 7, 2005
  • "FTO Advice and Formal Opinions in the Wake of Knorr-Bremse," AIPLA Spring Meeting, Philadelphia, Pennsylvania, May 12, 2005
  • "Counseling Small and Medium Biotech Companies," IAM Update, Chicago, Illinois, April 12, 2005
  • "The Impact of the Knorr-Bremse Case on Requests for Advice and Written Opinions," Utah IP Summit, Salt Lake City, Utah, February 18, 2005
  • "The Significance of the University of Rochester v. G.D. Searle Decision," moderator, AUTM Annual Meeting, Phoenix, Arizona, February 5, 2005
  • "Knorr-Bremse v. Dana Corporation: How This Landmark Decision May Affect Your Company," Brinks Hofer Gilson & Lione Client Seminar, Chicago, Illinois, October 12, 2004 and November 3, 2004
  • "A New Era of Patent Legal Opinions?," panelist, BioWest 2004 Conference, Denver, Colorado, October 27, 2004
Memberships & Affiliations
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  • 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
  • Intellectual Property Owners Association
Legal Experience
  • Brinks Hofer Gilson & Lione, Chicago, Illinois
    Shareholder, 1990-Present
    Associate, 1984-1989
  • Neuman Williams Anderson & Olson
    Summer Associate, 1983
Teaching Experience
  • The John Marshall Law School, Chicago, Illinois
    Adjunct Professor, Fall 2005-Present
    Substantive Patent Law
Press Releases