Matthew B. Zisk

Matthew Zisk is a transactional patent attorney representing clients on a full range of intellectual property matters, with a focus on technology-intensive transactions. Dr. Zisk has extensive experience evaluating intellectual property assets and counseling on, structuring, negotiating and implementing acquisitions, licensing and collaboration agreements in the medical diagnostics and device, pharmaceutical, biotech, energy and chemical industries.

His work includes global and U.S. license and cross-license agreements, co-development agreements, manufacturing and supply agreements, engineering, procurement and construction agreements, co-promotion/co-marketing agreements, strategic alliance agreements and IP-intensive mergers and acquisitions.

Dr. Zisk also performs intellectual property diligence and evaluations of technologies in the renewable energy, pharmaceutical, biotech and related fields, including coal gasification, biofuels and other biomass conversion, thermal and photo-voltaic solar systems, new building materials and next-generation fertilizers.

Dr. Zisk brings multiple perspectives to bear in representing his clients. He has worked both as outside counsel to small, medium and large companies and as senior in-house counsel at a Fortune 50 pharmaceutical, medical device and consumer products company. He is trained both as a lawyer and as a scientist and is conversant in both the legal and scientific aspects of his clients’ matters.

In addition to his training as a chemist, Dr. Zisk has extensive experience working with computer software and instrumentation, beginning as one of the first LOGO programmers, and subsequently on FORTRAN IV, BASIC, FORTRAN 77, C, C++ and the MS Visual programming languages.

He has designed and implemented DAQ and control systems for chemical instrumentation, including for a nanosecond laser flash system and for electrochemical instrumentation, served as a departmental network manager, and has taught advanced instrumentation courses. In addition to his transactional work, Dr. Zisk has significant experience in many other types of patent- and IP-related matters.

These matters include investigating and rendering freedom-to-operate, validity and patentability opinions; litigating patent and trade secret matters in federal court in the United States and Canada and before the U.S. International Trade Commission; patent drafting; conducting prosecution and interference practice before the U.S. Patent and Trademark Office; advising clients on advertising claims; and counseling clients on patent and other IP strategic issues.

Education:

• J.D., Ohio State University College of Law, 1997 (with Honors, Order of the Coif)
• Ph.D., Stanford University (Organic Chemistry) 1991 (thesis work conducted under James P. Collman)
• B.A., Boston University, Chemistry, 1985 (A.C.S. Certified, summa cum laude with distinction in chemistry)

Admissions:

• New York
• U.S. Patent and Trademark Office
• U.S. District Courts for the Southern and Eastern Districts of New York and Eastern District of Wisconsin
• U.S. Court of Appeals for the Federal Circuit

Associations:

• Licensing Executives Society
• American Intellectual Property Law Association