Jim Markey practices in all areas of intellectual property law with a focus on patent and trademark litigation, counseling and prosecution for clients in the pharmaceutical, healthcare, industrial gases & chemicals, and apparel industries. He is dedicated to providing the most effective opportunities and solutions for the results you deserve. Mr. Markey has extensive experience in post-issuance patent proceedings, including multiple related reissue applications regarding transdermal dosage forms and merger reexaminations regarding heart catheters, paper pulp treatment, polyacrylonitrile production and an exercise treadmill, all with excellent results. Mr. Markey’s experience also includes decades of intellectual property litigation and trial experience in a variety of technical fields.

Practice Areas

  • Patent and trademark counseling and prosecution
  • Intellectual property litigation

Experience

Mr. Markey’s intellectual property clients have included world-leading pharmaceutical, biopharmaceutical and chemical companies. He has also represented Onward Kashiyama Co. Ltd., Japan’s largest apparel company with a worldwide presence, in both trademark and patent matters.

Prior to practicing law, Mr. Markey worked as a design engineer for a company that manufactured heat transfer equipment for the chemical process and energy industries.

  • 4 years at Ostrolenk Faber LLP - Counsel 

  • 3 years at Virtual Law Partners - Partner   

  • 5 years at Duane Morris LLP - Partner   

  • 3 years at Jones Day - Partner  

  • 17 years at Pennie & Edmonds LLP - Partner  

  • 2  years at Kane Dalsimer Kane Sullivan Kurucz Levy - Associate  

  • 6 years at Doyle & Roth Manufacturing Co - Design Engineer   

Representative Cases

  • Represented major pharmaceutical and hospital products company in defense of patent infringement claims involving porous artificial bone implant technology. Won judgement in district court and settled favorably on appeal.
    • American Standard Inc. v. Pfizer Inc.
  • Represented developer of coronary and peripheral dilatation catheter technologies in reexamination and assertion of patent claims against infringers.
  • Represented global high-tech company inassertionofinkjet patent,trademark and copyrightrightsagainstinfringers and defense of antitrust counterclaims. Won jury verdict and negotiated favorable settlement prior to entry of judgement.
    • Hewlett-Packard Co. v. Nukote International Inc.
  • Represented worldwide consumer products and services company in action for trademark infringement, false advertising and unfair competition regarding a so-called nutritional supplement.
    • Virgin Enterprises Inc. v. Virgin Earth Inc
  • Handled patent due diligence on purchase of major line of over-the- counter drugs for an international healthcare products company.
  • Handled patent due diligence relating to several worldwide introductions of new lines of prescription drugs for international pharmaceutical companies.
  • Provided opinions and counseling for international pharmaceutical company regarding listings of patents in the FDA “Orange Book” of prescription drugs.
  • Provided trademark license counseling to international apparel company based in the Far East regarding various designer clothing lines in the U.S. Facilitated favorable settlement of license termination issues when necessary.
  • Provided patent opinions and prepared and prosecuted patent applications, including reexamination and reissue proceedings for leading medical device companies. Technologies involved were applied to wide-ranging pharmaceutical and chemical applications, including artificial bone implants, coronary catheters, pharmaceuticals, chemicals and gases.

Bar Admissions

  • New York State Bar
  • Florida State Bar
  • U.S. Patent and Trademark Office
  • Southern district of New York
  • Eastern District of New York
  • U.S. Court of Appeals for the Federal Circuit

Education

  • Manhattan College, BE Chemical Engineering, 1981
  • St John’s University School of Law, JD, 1985 

Request a Free Consultation

Mr. Markey is available for a free one-hour consultation to discuss your company's intellectual property law matters. You can schedule a consultation by contacting Feldman Law Group at 212.532.8585 or by submitting the online contact form.