202.642.1433Marc is a partner in the firm’s Intellectual Property and AI, Blockchain & Emerging Technologies practice groups.
Marc is a patent attorney who specializes in intellectual property strategy, advising clients on protecting, managing, and maximizing the value of their intellectual property assets. He has extensive experience helping his clients to build business-oriented strategic patent portfolios. He also has experience representing clients in post-grant administrative proceedings before the U.S. Patent and Trademark Office. Marc has developed structured, market-oriented frameworks to secure and enforce IP rights effectively. His expertise spans computer software, with a focus on AI, Fintech, database technology, content distribution, and cybersecurity.
In recent years, Marc has closely monitored the evolving patent landscape surrounding blockchain technology and AI technology. He also is a member of the Impact of Technology Expert Group at the European Union Intellectual Property Office’s Observatory on Infringements of Intellectual Property Rights.
A recognized thought leader in intellectual property, Marc has spoken globally at prestigious venues such as the World Trade Organization, the U.S. Patent and Trademark Office, and the European Union Intellectual Property Office. His insights have been published or quoted in leading outlets, including The New York Times, The Boston Globe, Forbes, Newsweek, and the Patent Trademark & Copyright Journal. Marc has earned consistent recognition as one of the IAM 350 Top Patent Strategists since the ranking’s inception.
Honors & Awards
- FinTech Sector IP Lawyer of the Year in Washington D.C., Global Law Experts, 2019-present
- FinTech Sector IP Attorney of the Year – Washington D.C., Corporate INTL Magazine (JRS Corporate Limited), 2019
- IAM 250, Intellectual Asset Management’s (Law Business Research), 2010-11
- IAM 300, Intellectual Asset Management’s (Law Business Research), 2012-23
- Client Service All-Star, BTI Consulting Group, Inc., 2016
Publications and Speeches
PUBLICATIONS
- A Blockchain Innovators Guide to IP Strategy, Protecting Innovation, and Avoiding Infringement (Chamber of Digital Commerce) December 2018
- Patent Office Institutes Post-Prosecution Patent Program, Co-Author(s): Gerard M. Donovan, 18 July 2016
- Federal Circuit’s Enfish is an Important 101 Decision, Co-Author(s): Gerard M. Donovan, Amardeep (Sonny) Grewal, 18 May 2016
- Beyond Bitcoin: Blockchain, Co-Author(s): Ranajoy Basu, Paul Bond, Edward J. Estrada, Anthony J. Ford, Jacqui Hatfield, Tyree P. Jones, Jr., Mark S. Melodia, J. Andrew Moss, Cynthia O’Donoghue, Carolyn H. Rosenberg, Evan Thorn, Stephen I. Winter, 11 May 2016
- New Patent Office Memo to Examiners Raises The Bar For § 101 Rejections, Co-Author(s): Gerard M. Donovan, 9 May 2016
- Supreme Court: Should Appeal Give Deference to Lower Courts on Claim Construction? Co-Author(s): Robert R. Riddle, 17 October 2014
- The U.S. Patent Minefield Network Interference: A Legal Guide to the Commercial Risks and Rewards of the Social Media Phenomenon (3rd Edition), 22 April 2014
- Effective Patent Monetization Strategy IP Monetization 2012: Maximize the Value of Your IP Assets, 9 May 2012
SPEAKING ENGAGEMENTS
- Speaker, “Blockchain 2.0: 2021 Legal & Regulatory Developments”, PLI, October 2021-2023
- Panelist, “Global Trade and Blockchain Forum”, World Trade Organization, December 10, 2019
- Unchain Convention- Managing the Patent Threat in Blockchain Eco-Systems, Berlin, June 12, 2019
- London Blockchain Week- The Emerging Patent Landscape Related to Blockchain Technology, London, February 11, 2019
- DC Blockchain Summit- Blockchain Technology: The Emerging Patent Risk, Washington, DC, May 10, 2018
- Questel Seminar – Is the Blockchain still open source? Radisson Blu Portman Hotel, London,1 December 2016
- Is the Blockchain Still Open Source? The Emerging Patent Landscape Surrounding Distributed Ledger Technology, CLE / CPD, Webinar, 28 June 2016
- Blockchain and Digital Currency: The Emerging Patent Landscape, Webinar, 8 March 2016
- Best Practices in Patent Monetization, “From the Nation’s Capitol: A Big Year for Changes in Patentability”, San Francisco, CA, Seminar / Webinar, 26-27 March 2015
- Calculating & Proving Patent Damages: Strategic issues for proving and refuting damages claims, 18-19 September 2014
- “Patent Valuation: Lessons from Recent Transactions in the Patent Monetization Marketplace”, Twelve & K Hotel, Washington, D.C., Seminar
- Law Seminars International Presents: Best Practices in Patent Monetization, University Club of San Francisco, San Francisco, CA, 6-7 March 2014
- 2013 ANA Ad Law & Public Policy Conference, Four Seasons Hotel, Washington, D.C., 19-20 March 2013
- IP Monetization 2012: Maximize the Value of Your IP Assets, “Implementing a Successful IP Monetization Program”, PLI New York Center, New York, NY, 9 May 2012
- Law Seminars International Presents: Best Practices in Patent Monetization, San Francisco, CA, CLE / CPD, 6 February 2012
- Patent Monetization Cookbook: A Structured Approach to Monetizing Patents, 2012
- Building & Enforcing Intellectual Property Value, IP Value 2012
- Law Seminars International Presents: Best Practices in Patent Monetization – Strategies for Getting Value from Patents in the Corporate World, San Francisco, CA, 21 February 2011
- Efficient Execution of an IP Strategy IAM Magazine, 6 February 2006
Pro Bono
- Center for Transformative Teaching & Learning, Pro Bono Counsel
News, Events & Insights
Education
- Catholic University School of Law, J.D.
- Boston University, M.S., Mechanical Engineering
Previous Experience
- Rimôn, Partner
- Reed Smith, Equity Partner and Co-leader of Fintech Team
- Nixon Peabody, Partner, Patents Practice Group Leader
Areas of Practice
Admissions
- District of Columbia
- U.S. Court of Appeals for the District of Columbia Circuit
- U.S. Court of Appeals for the Federal Circuit
- U.S. Patent and Trademark Office (USPTO)